WIPO Crowing Again About "Cybersquatting"

Most of us would be put off if a court issued a press release cheering the number of prisoners its judges had put behind bars or the number of tenants it had helped landlords to evict. That seems antithetical to the neutral adjudication of disputes, and ethical rules regularly decry such "appearance of bias." Yet WIPO seems to think it perfectly natural to crow about its arbitrators' favoritism for complainants against "cybersquatters" in UDRP proceedings. It issued a release that reads like a solicitation for trademark claimants' business, not a promotion of neutral arbitration services... more»

Putting a Spammer in Jail

The country's first criminal trial about spam ended in Leesburg, Virginia earlier this month with a conviction of Jeremy Jaynes, better known under his nom de spam of Gavin Stubberfield. I was an expert witness for the prosecution, the Commonwealth of Virginia. The case was brought under Virginia's state anti-spam law, not the weaker Federal CAN-SPAM act... more»

The Non-Parity of the UDRP

The UDRP is obviously not working. Two websites, fundamentally the same (criticism at trademark.tld), two opposite decisions, both within weeks of each other! A Complainant (Biocryst Pharmaceuticals Inc) initiated a complaint to WIPO about one of my criticism websites (biocrystpharmaceuticals.com). The Panel found in my favour. Another Complainant (Eastman Chemical Inc) meanwhile made a complaint to NAF regarding another of my criticism websites (eastman-chemical.com). The Panel found against me. The two websites are fundamentally the same, both websites in criticism of the practices of the individual companies concerned... more»

Typosquatting: A Solution

Typosquatting's negative effect on the surfing experience can be easily eliminated, and in a way that allows all parties to make money. What's called for is an affiliate program. You would not be happy if you typed a domain name into your browser and wound up in nowhere land because of a simple misspelling. That's the negative surfing effect of typosquatting... more»

UDRP Dilemma In Proving Bad-Faith Domain Registrations - Part II

In the second part of this 3-part series article, the issue of UDRP in proving bad-faith domain registrations is examined with respect to the trademark’s characteristics. The first part of this article can be found here.

In assessing whether there is a passive holding of a domain name, panels look carefully into the trademark's characteristics in question, namely what is the degree of reputation and distinctiveness of the trademark in question.
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UDRP Does Not Apply To Bad Faith Domain Name Renewals – Part II

The first part of this article offered background examination on why Uniform Dispute Resolution Policy (UDRP) fails to apply to domain name renewals. Here, in the second part of this two part series, we will examine UDRP further by reviewing cases involving the renewal of domain name registrations. more»

Domain Name Theft Part II: Did ICANN Leave Foxes Guarding the Chicken COOP?

When it comes to stealing domain names, I suspect that there are two reasons why so many web bandits appear to be immune from ICANN (the Internet Corporation for Assigned Names and Numbers uses the acronym ICANN): the first reason I discussed in my last column on domain name theft (where I described a substantive void in domain name "regulation" as a primary factor for the increasing incidence of domain name theft), the second reason, which is the focus of this column, is the procedural anomaly that currently infuses ICANN's uniform dispute resolution process (UDRP) by providing no administrative forum for domain name registrants who become victims of domain name theft carried out by ICANN's registrars. more»

Letter from Rome

I am at the ICANN meeting in Rome. The big story here is that ICANN is under attack for not sticking to its narrow mission -- technical coordination of the DNS and IP numbering system. People here are referring obliquely to the VeriSign lawsuit as "recent events" (as in "in light of recent events"). This euphemism reminds me of words used to reference the US Civil War ("the late unpleasantness"). more»

TLD Registration Enforcement: A Call for Automation - Part II

Last month, I wrote to describe the state of registration restrictions in .BIZ, .US, and .NAME. I noted trends among nonconforming registrations in these TLDs, and I suggested that certain automated enforcement systems might serve to improve compliance. But an important larger question remained unanswered: Why care about registration restrictions in the first place? Much as registries might like to ignore the restrictions, I submit that the Internet community nonetheless ought to hold them to their contracts.
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Why WIPO Does Not Like the UDRP

The World Intellectual Property Organization (WIPO) -- the same organization whose head recently equated intellectual property infringement with terrorism -- has been pressing ICANN to add domain name monopolies on the names of countries, and the names and acronyms of inter-governmental organizations, into the Uniform Domain Name Dispute-Resolution Policy (UDRP). Despite the fact that no-one but WIPO seems to want these new exclusions, a working group has nonetheless been convened to study their recommendations. more»

Do We Need Title Insurance for Domain Names?

Over the Thanksgiving holiday I read an article in Forbes (November 13, page 148) about real estate title insurance. The article was about how real estate title insurance is a joke and overpriced. But as I read in the article how titles are investigated, in dawned on me that a title check service for domain names would be helpful. Title checks and title insurance would prevent you from losing money when you bought a stolen domain. Last year I almost got bilked for $5,000 buying domains...before I discovered they were stolen... more»

UDRP Does Not Apply To Bad Faith Domain Name Renewals – Part I

The purpose of the Uniform Dispute Resolution Policy, known as the UDRP (hereafter the "Policy"), is to determine disputes relating to the registration or acquisition of domain names in bad faith. To succeed in a UDRP action (i.e. to obtain cancellation or transfer of the disputed domain name) it is necessary for the party bringing the complaint (the complainant) to show that (i) the disputed domain name is identical with or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the domain name holder (known as the respondent) has no right or legitimate interest in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith. Each of the aforesaid three elements must be proved by the complainant to warrant relief.
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Orange Bowl ICANN UDRP Case Explores Fair Use

The resale of genuine products presents particular difficulties in domain name disputes, testing the application of fair use doctrine. Several domain name disputes involving the resale of event tickets illustrate the point. I served as a panelist in one such case The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc., D2004-0947 (WIPO 2005). The decision, which issued with a dissent, explored fair use in the domain name context and addressed several related ticket resale disputes. more»

Relief Denied to Personal Name of Danish Businessman

Danish businessman Joacim Bruus-Jensen challenged the domain name www.joacimbruus-jensen.com in ICANN UDRP proceeding. He failed to prove enforceable trademark rights in his name and was denied relief in this decision by Panelist Derek Minus. Joacim Bruus-Jensen v. John Adamsen, Case No. D2004-0458 (WIPO Sept.29, 2004). The case should be considered before seeking to use the ICANN UDRP to take action based on the personal name of a business executive. more»

Domain Name Issues In Russia

How are domain names dealt with in Russia? This article discusses current issues related to the registration and assignment of domain names in ".ru" zone (Russian top level country code domain) and trademark protection on Internet. more»