Trademark Hysteria On New gTLD’s Unfounded? 725K Domains/ 53 URS/17 UDRP - Since the new gTLD’s launched there are approximately 725,000 new gTLD registrations.
By my count, URS have been filed against 53 domain names and UDRP’s have been filed against 17 domain names (counts by domain names not cases)
So basically 70 domain names out of 725,000 or a 1,000th of 1% of all new gTLD domain names registered have been hit with a URS or UDRP.
It should be pointed out that not all of the filed cases went in the favor of the complainant and decisions are still pending.
Of course ... read more ...
Tag Archives: legal
Sat 10th May 2014
Thu 8th May 2014
Maccabim.com Partners With DomainTools To “Identify Serial Cybersquatters” - According to a press release out today, Maccabim.com, a “researcher and developer of cybercrime solutions to protect brands and IP assets, today announced the launch of its Serial Cybersquatter Detector (SCD) Network powered by DomainTools®
The SCD Network “instantaneously identifies both the serial cybersquatters exploiting its members’ trademarks, as well as the opportunities to either initiate or join class complaints through the platform.”
“Members thereby reduce their Uniform Domain-Name ... read more ...
After 15 years of trying, association uses UDRP to get HoldOn.com domain name -
Hold on just a minute…
Amicus Trade AB has been trying to get the domain name Holdon.com for its Holdon brand of fasteners since at least 1999.
That’s when the company sent a letter to the (then) owner of the domain with an offer to buy it.
Ownership of the domain has changed multiple times since then according to Whois record. In 2013 the whois changed to Dharshinee Naidu. According to DomainTools, Naidu’s email address is associated with 36,544 domain names.
Amicus ... read more ...
Wed 7th May 2014
Company loses UDRP opposite 20-year-old-domain, though maybe is shouldn’t have. -
Panel believes registrant registered domain name over 20 years ago. It didn’t.
German company Softway AG has lost a UDRP it filed against the 20-year-old domain name Softway.com.
On the surface, it appears to be a particularly egregious case.
Although Softway AG claimed it’s been around since 1989, it didn’t set up a web presence until 2007, at which point it registered Softway.de.
It’s at that time that Softway AG started asking the owner of Softway.com ... read more ...
Mon 5th May 2014
Qwalify does’t validate for send in Qualify.com domain name dispute -
Panel says Qualify.com wasn’t registered in bad faith to take advantage of Qwalify, Inc.
Greg Ricks has successfully defended his third UDRP dispute in under a month.
Ricks previously defended JustBelieve.com and Massy.com, and today WIPO issued a decision in his favor for Qualify.com.
I wrote about the Qualify.com filing at length in February, so you can read the gist of the complaint here.
A key to the case was that Ricks registered the domain name more than a ... read more ...
Thu 1st May 2014
Wolfram wins .CEO URS brawl on second try -
This time the case computes.
Search and data company Wolfram has won a Uniform Rapid Suspension (URS) case for Wolfram.ceo…on the second try.
It lost the first case because it filed the case as Wolfram Research, Inc. The panelist noted that the trademarks mentioned in the case were owned by Wolfram Group LLC.
So Wolfram refiled the case as Wolfram Group LLC and won this time around.
The registrant, Andrew Davis, claimed that Wolfram is a common name. The panel didn’t ... read more ...
Blackberry files obvious app for predictive & energetic tip turn domain key -
Idea is to change from .com to another TLD depending on what you type.
Phone maker Blackberry has filed a patent application with the U.S. Patent and Trademark Office for a predictive and dynamic top level domain name key.
We’ve all used the .com key found on many Android devices and previously on Apple phones and tablets. Recent Apple changes now make you press and hold the “.” key to enter .com or select from a list of other extensions.
Blackberry’s idea ... read more ...
Wed 30th April 2014
Donuts’ Claims Plus use starts today -
Trademark Claims end, Claims Plus begins.
One of the Rights Protections measures in place for new top level domain names is the Trademark Claims service.
For 90 days after a new TLD enters general availability, registrars must show a notice if a second level domain name registration matches a mark in the Trademark Clearinghouse.
Donuts’ first batch of seven domain names (.ventures, .singles, .bike, .holdings, .plumbing, .guru, .clothing) concluded the 90 day period ... read more ...
Tue 29th April 2014
FICEP SPA guilty of retreat domain name hijacking in unwashed UDRP case -
This case is particularly dirty.
Italian machine tool manufacturing company FICEP SPA has been found guilty of reverse domain name hijacking in a UDRP for FICEP.com.
Czech Arbitration Court panelist Jane Seager got the call right as this is a very clear cut case of reverse domain name hijacking. It was a pretty dirty filing.
FICEP SPA filed a case against respondent FICEP in October. It was a clear-cut case that it lost.
Although FICEP SPA has been around for decades, ... read more ...
3 new domain registries ask ICANN for dual impression domain names -
.Wiki, .globo, and .ceo registries want to offer two character domain names.
Three new top level domain name registries have asked ICANN to allow them to register two character domain names under their TLDs. New TLD registries aren’t allowed to offer two character second level domain names per their agreements with ICANN, but I expect this to change in coming years. The requests are very different.
1. .Wiki applicant Top Level Design has asked for two character ... read more ...
Fri 25th April 2014
Frank Schilling beats $200 billion medical hulk Novartis in UDRP -
9 year delay in filing UDRP hurts pharma company’s claim of disruption to its business.
Frank Schilling has successfully defended the domain name ClearCare.com in a UDRP filed by Novartis AG.
Novartis, which has a $200 billion market cap, offers a line of contact lens cleaning solutions under the name Clear Care.
Schilling (through attorney John Berryhill) noted that his business involves registering expired domain names and parking them with ad links unrelated ... read more ...
Wed 23rd April 2014
Meet The 1st New gTLD Serial Cybersquatter, As Farris Nawas of Austin Loses His 3rd URS - The National Arbitration Forum has suspended the domain name registration for SPANX.clothing after an examiner in a Uniform Rapid Suspension proceeding (URS) found the registrant, Farris Nawas of Austin Texas infringed on the trademark of Spandex.
Since the only business line Spandex is involved in is clothing, it is the no-brainer type of registration that the URS was designed for.
This marks the 3rd time that Farris Nawas has lost a URS on a new gTLD domain name in just 5 weeks.
Mr. Nawas ... read more ...
Tue 22nd April 2014
My-Art.com owners gets MyArt.com in second try UDRP -
Domain transfer (that didn’t actually happen) resets the clock for registration date.
My Art, a French company that operates the website My-Art.com, has convinced a Czech Arbitration Court UDRP panelist to order the transfer of the domain name MyArt.com.
This is the second time My Art has filed a UDRP against the domain name.
My Art lost a case it filed in 2011 because the registrant of the domain name had registered it in 1996, well before the company had a trademark ... read more ...
Thu 17th April 2014
Panelist digs adult pivotal fact in Massy.com UDRP -
Intent-to-use trademark does in complainant.
Neal Massy Holdings, a business conglomerate operating in the Carribean, has lost a UDRP it filed against the domain name Massy.com. Massy.com is owned by domain investor Gregory Ricks.
Ricks defended himself without counsel in the UDRP. He made a good defense, pointing out that the domain name is a dictionary word that he registered 14 years ago.
He overlooked one key thing, though. Panelist Paul M. DeCicco found this ... read more ...
Tue 15th April 2014
25 Plaintiffs Filed Federal Suit Over 231 Domains; 26 of Which Are No Longer Registered - A federal lawsuit was filed last week in the New Jersey District Court for trademark infringement against the owners of 231 domain names some of which are pretty generic and 26 of which are no longer registered.
Besides the 26 that are no longer registered, 16 domain names named as defendants in the lawsuit are in redemption period and are lightly to be deleted as well.
Meaning that about 20% of the domain names in the lawsuit are basically not serving up anything that would infringe on the Plaintiff’s ... read more ...
Mon 14th April 2014
Wolfram doesn’t use mathematics in URS dispute -
A lot of brain power missed the connection.
Wolfram Research, Inc. has lost a Uniform Rapid Suspension (URS) case for mathematica.guru and wolfram.ceo, and the case is noteworthy for a couple reasons.
First, the domain names were owned by two different people. One of the whois records has privacy on it, and companies often file UDRP cases against domains that they think the same person owns. But in this case the domains were at two different registrars, which makes ... read more ...
CTIA kills Amazon.com’s bid for .mobile domain name -
International Chamber of Commerce decision eliminates Amazon.com’s plans to run the .mobile top level domain name.
CTIA, a trade group representing mobile phone carriers, has successfully objected to Amazon.com’s application to run the .mobile top level domain name domain name.
CTIA filed Community Objections against applications filed by Amazon.com and Dish DBS to run .mobile.
Both applicants originally planned to operated .mobile as a “Closed Generic”, ... read more ...
Fri 11th April 2014
Famous Four submits .Sport reconsideration request…with Ombudsman’s support -
Ombudsman recommends new panelist hear .sport community objection.
I haven’t written about many new TLD objection appeals (reconsideration requests) because there are so many and few have a chance of succeeding.
But a recent one from Famous Four Media (pdf) for .sport is unique: ICANN’s Ombudsman has supported the company’s call for a rehearing with a different panelist.
The reconsideration request is based on Famous Four’s recent disclosure of a link between ... read more ...
Dune.com strike with UDRP -
Generic word targeted with UDRP filing.
The generic domain name Dune.com has been hit with a UDRP at World Intellectual Property Organization.
The case was filed by Dune Holdings Limited, a London-based seller of shoes and accessories. The company uses the web address DuneLondon.com, so it’s no wonder that it wants the shorter domain name.
When I search for “dune” on Google the first five results are about the science fiction novel and movie. Of course, dune ... read more ...
Uniregistry Whois tells we because a domain isn’t available -
Whois explains if domain is on name collision list.
One of the most frustrating challenges of pre-registering new top level domain names is having the registrar return a search “not available”.
You end up asking yourself “why isn’t it available?” The first instinct is to blame the registry for holding back what appears to be a good domain name.
Odds are that’s not the case. Instead, the domain name is temporarily blocked due to name collisions. These domains ... read more ...
Tue 8th April 2014
Busted: UDRP panelist contradicts his progressing decisions -
Panelist’s rationale for latest decision directly contradicts earlier ones.
National Arbitration Forum panelist Héctor A. Manoff has found against Restomod, Inc. in a UDRP it filed for the domain name restomod.com.
The decision is probably correct, but how he came to the decision directly contradicts earlier decisions he has made.
In the Restomod.com case, the domain registrant registered the domain name way back in 1999. The complainant didn’t register a trademark ... read more ...
Mon 7th April 2014
UDRP complainant shoots self in feet with supplemental filing -
Company effectively admits its original complaint was destined to fail when it makes supplemental filing.
Inbay Limited of the United Kingdom has been found guilty of reverse domain name hijacking in a UDRP for Inbay.com.
The three person panel found that Inbay should have known its complaint would fail from the outset. Perhaps more importantly, it should have known it would fail after receiving the domain owner’s response — yet it decided to file a supplemental ... read more ...
JustBelieve.com saved in UDRP, no RDNH interjection to “idiot defense” -
Arbitrator decides that the case was so weak that the complainant just didn’t know any better.
In March I wrote about how Life is Now, Inc., which promotes business coach David Neagle, had filed a UDRP against JustBelieve.com.
Domain owner Greg Ricks has successfully defended the ridiculous UDRP.
The primary determining factor was that Ricks owned the domain name before the complainant started using the term “Just Believe”. That makes it impossible to prove ... read more ...
Thu 3rd April 2014
HugeDomains.com Takes UDRP Loss On AustinPain.com to Federal Court: We Say Good Get Em - HugeDomains.com, LLC, just filed a lawsuit against ROBERT P. WILLS, MD. PA, a Texas Professional Association d/b/a AUSTIN PAIN ASSOCIATES for a declaratory judgement arising out of the UDRP decision against it on the domain name AustinPain.com.
At the time we called the UDRP decision a bad one.
While is you can not formally “appeal” a UDRP, if a domain name is ordered to be transferred by a panel, the domain owner has the right to file with a Federal Court an action for a declaratory judgement ... read more ...
MapFree.com is not confusingly identical to Mapfre, row rules -
Majority of panel denies all three prongs of UDRP complaint while another confirms all three.
A World Intellectual Property Organization panel has ruled against Spanish company Mapfre in a UDRP case the company brought against MapFree.com.
The domain name belongs to Vertical Axis (Kevin Ham’s company). Vertical Axis argued that it registered the domain name for its generic meaning. It pointed out that is has registered many other domains that start with Map.
The ... read more ...