Trademark owners trump Domain owners

[adland]

In New Forum for Domain Name Disputes, Trademark Holders Dominate

ASHINGTON -- When Peter J. G. Toren, a New York trademark lawyer, chose to defend a small California company accused of illegally holding a domain name, he was confident his client would prevail under a new system for resolving such disputes quickly and cheaply.

Yes, his client's domain name, current.com, was similar to another's company's trademark. But it had never tried to infringe on that trademark, nor had it tried to peddle the Internet address to the company at a profit.

In fact, Current Event, the start-up company that first registered the name in 1997 for use as the address of its news site, was not aware that another company held rights to the seemingly generic word, he said.

But an arbitrator ordered in April that the domain name be handed over to Current USA, a large gift and stationery company based in North Mankato, Minn.

That case, and several others, are raising questions about whether arbitrators working under a dispute resolution system established by the Internet's oversight board, the Internet Corporation for Assigned Names and Numbers (Icann), are following the narrow parameters established by the board for reassigning domain names.

The arbitration system was set up as a way to cut down on cybersquatting, the bad-faith registration and resale of domain names, and on the amount of litigation generated by disputes over names. The idea was to give parties large and small a quick, inexpensive alternative to the courts for resolving such cases.

So far, the system is popular. Between last December, when it was introduced, and the middle of May, 727 cases involving 1,067 domain names were filed by companies or people laying claim to registered Internet domain names incorporating words that are the same as, or similar to, their trademarks or business names.

Of the 327 cases decided, 243 cases, or 74 percent, have favored the businesses or trademark holders filing the claim. Most cases involve clear instances of exploitative cybersquatting. But lawyers say mistakes are being made.

Under Icann's rules, known as the Uniform Dispute Resolution Policy, several criteria are used to determine if a domain name has been registered in bad faith: if the domain name holder tries to rent or resell the domain to the trademark holder or a competitor; if the name was registered to prevent the trademark owner from getting it; if it was registered for the primary purpose of disrupting a competitor's business; or if the domain name holder tried to attract the trademark holders' customers or otherwise tried to cause confusion about who owned the domain.

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74 percent of cases favor existing trademark holders.

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In the dispute over current.com, however, the decision issued by Paul Doerf, a retired judge, was based on two facts: that Current Event held no trademark claim on the word "current," and that the company did not seem to be a legitimate business, because a letter and e-mail sent to the addresses provided when the name was registered went unanswered, and the phone number provided was no longer valid.

During the proceedings, Toren said he presented evidence that the mailing address was indeed still valid.

"To tell you the truth, I was flabbergasted," Toren said. "I've been in this business long enough to know that you never are certain about judicial or quasi-judicial opinions, but if there was one decision I was feeling comfortable with it was this."

The dispute over current.com was handled at the National Arbitration Forum in Minneapolis, one of four arbitration centers that have been approved by Icann. The centers use lawyers and retired judges, either alone or in panels, to decide the cases.

Carl Oppedahl, a trademark lawyer in Dillon, Colo. who has been monitoring the cases brought under Icann's new system, said it is easy to predict the results of most of the cases simply by looking at the domain name involved.

"When it is unique and/or coined, like cunardcruise.com and christiandiorcosmetics.com, the panel decides against the domain name owner," Oppedahl wrote in an e-mail message. "When it is a common dictionary word, like allocation.com, six.net, fido.com, launchpad.com, thyme.com and astrocartography.com, the panel decides in favor of the domain name owner."

Oppedahl noted, however, that in well over half of the cases involving unique or coined domain names, the owner of the name simply did not respond, so the name was turned over to the party that initiated the dispute.

Oppedahl agreed that there had been "a handful of mistakes," the worst involving a dispute over the domain name crew.com.

That case, decided by the World Intellectual Property Organization's Arbitration and Mediation Center, resulted in an order that crew.com be turned over to J. Crew, the clothing company, mostly because the entity that owned the domain, Telepathy, held about 50 domains that included trademarks or common words that might be attractive to businesses.

But one of the three arbitrators on the panel that decided the case wrote a dissenting opinion, saying his colleagues had overstepped their mandate to follow the carefully crafted test set out by Icann to prevent abuse by big trademark holders.

"The majority seems to assume that a trademark owner has some sort of God-given right to use the trademark to the exclusion of others," wrote G. Gervaise Davis III, in the dissent to the April 20 decision.

"In my judgment, the majority's decision prohibits conduct which was not intended to be regulated by the Icann policy," Davis wrote. "This creates a dangerous and unauthorized situation whereby the registration and use of common generic words as domains can be prevented by trademark owners wishing to own their generic trademarks in gross. I cannot, and will not agree to any such decision, which is fundamentally wrong."

Toren, a lawyer with Brown & Wood in New York, is appealing the current.com case in federal court in Virginia. He said he has represented both sides in the Icann dispute resolution process, and while he advises clients who are trademark holders to take advantage of the new system, he said he is troubled by the process.

"I don't think it's a fair process," he said. "I don't think it's well organized. I think it's entirely stacked in favor of trademark holders... I think it's great if you can get a quick decision. But this is not justice."

Andrew McLaughlin, senior advisor and chief financial officer of Icann, said the group would be doing a review later this year of the arbitration decisions and whether or not they properly reflect Icann's policy.

"We are encouraging people out in the legal community to read these and publish their critiques so that we can review them," he said. "It is premature for us to do a critique."

[singloon]

hmmm interesting stuff again on domain names

Steve, maybe a forum for domain names & hosting ?

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Evangelion in the 21st century
Eva2000.com
Australian Star Wars Prequels
ThePrequels.net
Anime2001 Network
Anime2001.com
Coming soon...
TheDesktopThemes.com Wallpapers

[aircav]

So how does one go about trade marking a name.

Does anyone know of a good site that will lead you step by step in getting a phrase / name trademark?

Thanks
Aircav

[tteenie]

Hi,

My domain name(without the .com)trademark just went through and I just got my certificate in the mail 3 days ago. It took about a year. I am in the process now of changing my name on my site to include the (r) after it as required. I did it over the internet at the US Trademark and Patent office site. You pay upfront when filing. http://www.uspto.gov/

http://geekvillage.com/ubb/smile.gif I'm a happy gardener now!

gigglegarden.com

[This message has been edited by tteenie (edited 05-19-2000).]

[singloon]

would anyone happen to know the domain trademark situation for someone like me.

Residing in Australia owning US domains ?

I hate how it's so hard and expensive to get an Aussie domain for *.com.au you need to be a registered business and only one domain per registered business http://geekvillage.com/ubb/frown.gif

------------------
Evangelion in the 21st century
Eva2000.com
Australian Star Wars Prequels
ThePrequels.net
Anime2001 Network
Anime2001.com
Coming soon...
TheDesktopThemes.com Wallpapers

[Aaron Dragushan]

This whole case (current.com) is crazy - you cannot trademark a dictionary word, it's as simple as that. *shakes head*

What is the world coming to?

[tteenie]

Trademarking a common name is redundant and shouldn't even be allowed. That's only "common" sense. http://geekvillage.com/ubb/wink.gif For one thing, how are you supposed to know that some business offline in ouchiwawa land has that "common word" business name you registered as a domain name? You don't know! That is what happened to me with the domain name I chose which was "uncommon" to say the least. After threatening emails to relinquish the name claiming it was "Trademarked", I did a search and found no trademark so I filed for a trademark myself to keep my site's impressionable name. The other party was a long time existing offline (unrelated) business that I didn't even know existed. How could I know? Only if they registered that name ahead of me would I. :O

[WebsiteSponsors]

It is not so much the domain name. But what shouldn't be allowed to happen is for someone else to use the same name as your for the same business type.

Lets say you run a business sells light bulbs. Your register the domain name NiftyLightBulbs.com and work really hard to get your business going good and well known.

I don't think that someone should be able to register NiftyLightBulbs.net and do the exact same business (selling light bulbs) that you are after you have already been doing it. It is just not right for someone else to benefit from a name that you worked to get well known.

Now if they wanted to register NiftyLightBulbs.net for any other reason than that would be fine.

[aircav]

Thanks tteenie for providing the link.

Wow a whole year to get the process taken care of. That seems like a long time.

Seems to me like these trademark issues are getting out of hand. I can see where one trademarks a unique name (something not listed in a dictionary) but it seems to me that more and more dictionary words or combinations of are being trademark i.e. "for dummies, search made simple,".

Oh well another project to take care.

Thanks again

Aircav