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WIPO suggests RapidShare might own “rapid” after all

Kevin Murphy, September 3, 2010, Domain Policy

RapidShare has won a UDRP complaint against the owner of rapidpiracy.com, after the WIPO panelist apparently went against recent precedent.

As I’ve been reporting for a while now, RapidShare has been trying to clean up its brand by filing UDRP complaints on domains that contain its trademark.

In pretty much all cases the offending domain hosts a web site containing links to copyrighted material hosted on rapidshare.com and other file-sharing services.

In most cases, the domain also includes the word “rapidshare”, which the company has trademarked.

In July, a WIPO panelist rejected RapidShare’s claim on rapidbay.net, concluding that the words “rapidbay” and “rapidshare” were not sufficiently alike to warrant an “identical or confusingly similar” finding.

Now, a different WIPO panelist has come to the opposite conclusion, finding for the complainant in the case of rapidpiracy.com; “rapidshare” and “rapidpiracy” are apparently confusingly similar.

Acknowledging the precedent could have been “fatal” to RapidShare’s case, Matthew Harris drew a distinction, arguing that “piracy” and “share” are conceptually similar, whereas “bay” was not.

it is not fanciful to suggest the term “rapidpiracy” can be read as involving a conceptual allusion to the Complainants’ mark (perhaps suggesting an illegal version of the Complainants’ services).

He backed this argument by pointing to the fact that there were three references to RapidShare on the first page of rapidpiracy.com, before the complaint was filed.

In short, an obvious inference from this content is that the Respondent intended the Domain Name to be understood as alluding to the Complainants’ mark.

Harris noted that WIPO guidelines say that panelists should not take into account the contents of a web site in order to determine whether the domain name is similar to a trademark, but he had an excuse.

The test is not of similarity between businesses or websites. It involves a comparison between mark and domain name only. However, that does not mean that the content of the website cannot in some cases provide a pointer as to how Internet users will perceive a domain name that in turn might inform the relevant comparison.

(Domain Name Wire has previously noted that Harris has a record of “questionable” decisions.)

He concluded:

So do these factors provide sufficient similarity in this case? Bearing in mind that this is a low threshold test and in the absence of argument to the contrary, the Panel ultimately concludes that the Complainants have satisfied that test. The Complainants have only just crossed the threshold and in doing so they were given a helping hand by the Respondent; but they have crossed it nevertheless.

In my humble opinion there’s no doubt that rapidpiracy.com were a bunch of scoundrels, but I can’t help but wonder whether UDRP was the right place to address the problem.

Yet the precedent has been set; RapidShare does have some claim on the word “rapid” under UDRP, despite its lack of a trademark.

What this means for the UDRP case against rapid.org, which is also in the business of helping people share copyrighted material, remains to be seen. I’m told that case has been assigned the same panelist.

Facebook sues TeachBook.com for cybersquatting

Kevin Murphy, August 24, 2010, Domain Policy

All your “book” are belong to us?

Facebook has filed a cybersquatting and trademark infringement lawsuit against TeachBook.com, a social networking site for teachers.

The suit claims the site unfairly capitalizes on the Facebook trademark by using the “book” portion of the mark to evoke the idea of social networking.

According to the complaint, one of TeachBook’s selling points is that many schools ban teachers from using Facebook in order to prevent kids extorting them using personal information.

I don’t know how popular the site is — it doesn’t look like much — but it appears that TeachBook also owns a trademark on its brand.

I doubt this kind of claim would hold up under UDRP rules (unless a “friendly” panelist got the case), which is probably why Facebook has resorted to the US courts.

CourthouseNews.com has a PDF of the complaint and exhibits.

ITU chief snubs ICANN’s Beckstrom

Kevin Murphy, August 24, 2010, Domain Policy

“If your name’s not down, you’re not coming in.”

That’s pretty much the message sent to ICANN chief Rod Beckstrom by the International Telecommunications Union’s secretary general, following his request to attend a top-level ITU policy meeting.

Beckstrom wrote to Hamadoun Toure last month, asking for observer status at October’s ITU Plenipotentiary Conference – the “supreme organ” of ITU policy-making, held every four years.

The idea was that ICANN and the ITU would start to develop a more formal relationship.

In a letter published today, Toure turned him down, noting that the guest-list for the Guadalajara meeting is strictly limited by convention to entities such as national telecoms regulators and UN agencies.

For your information, the Plenipotentiary Conferece, the supreme organ of the ITU, is the highest level of administrative conference for the Union.

I regret to inform you that the ITU is unable to respond positively to your request to attend

Ouch.

ICANN and the ITU have a spiky history. It’s well known that the ITU would prefer internet addressing to be handled from Geneva rather than Marina Del Rey. Over the years, it’s occasionally made the odd attempted power grab.

The fact that Beckstrom has been rebuffed is surely more evidence that, for all its flaws, ICANN is still a better place to manage the DNS.

If the head of ICANN can’t even observe the ITU’s top dogs at work, what chance would the rest of us have of being heard?

Microsoft wins Kinect domains, but still doesn’t own kinect.com

Kevin Murphy, August 22, 2010, Domain Policy

Microsoft has successfully recovered two domain names that contain its Kinect games trademark, but kinect.com still belongs to another company.

A National Arbitration Forum UDRP panelist handed Microsoft kinectxbox.com and xbox-kinect.com, which were registered on the eve of Kinect’s launch, calling the registrations “opportunistic bad faith”.

The registrant, located in France, said in his defense that he’d planned to create a fan site for the Kinect, which is an upgrade for the Xbox games console.

But he didn’t get a chance – the domains were registered on June 12, Kinect was announced the following day, and Microsoft had slapped him with a UDRP complaint by June 29.

As I reported back in June, kinect.com is currently registered to an ad agency called CAHG. I’d be surprised if Microsoft hasn’t tried to buy the domain already.

Interestingly, Microsoft, which looks like a client of Melbourne IT’s brand management service, does own kinect.co, but it currently redirects to a Bing search.

We Buy Any Car UDRPs webuyanymotors.com

Kevin Murphy, August 19, 2010, Domain Policy

If you live in the UK, you’ve probably seen the annoying-as-hell (yet consequently effective) WeBuyAnyCar.com commercials on TV.

Now the company is going after the domain webuyanymotors.com, owned by another British company with a similar business model, with a UDRP proceeding.

WeBuyAnyCar has obviously spent a fair bit of money building its brand up recently, but are “car” and “motors” really confusingly similar?

Trying singing along to the commercial using “motors”. It just doesn’t scan properly.