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Atlas shrugs after movie UDRPs

Kevin Murphy, June 9, 2011, Domain Policy

The producers of a movie based on the cult novel Atlas Shrugged have become the latest recipients of conflicting Uniform Dispute Resolution Policy decisions.

In two recent WIPO decisions, both written by the same panelist, Atlas Productions won its complaint over atlasshruggedmovies.com (plural), but lost another over atlasshruggedmovie.com (singular).

The company released a movie adaptation of the 1957 Ayn Rand book in April, having secured the rights in 1992, but did not appear to have a registered trademark on the name.

The split decisions, both made by WIPO panelist Richard Lyon, rested largely on whether the company had secured, through its investment, common law rights to “Atlas Shrugged”.

In the atlasshruggedmovies.com case, the panelist decided on balance it had rights, and awarded the domain to Atlas without discussing whether the domain had been registered in bad faith.

The decision to allow atlasshruggedmovie.com to remain with the original registrant appears to be because it was registered in 2004, well before Atlas started promoting its movie, and because the respondent made a convincing case that he is a writer/director of spoof movies.

Lyon noted: “There is much to spoof in Atlas Shrugged the novel.”

The fact that the respondent was lawyered up (represented by the law firm Greenberg Traurig) probably helped matters also.

By contrast, the respondent in the atlasshruggedmovies.com sent WIPO an email that constituted the entirety of his defense:

I am the owner of ‘atlasshruggedmovies.com’

I have no motives to go into infringe on any copyrights.

I am in fact the rightful owner and am waiting the interested party to contact me and make a reasonable communications regarding the domain.

I am not permitting the transfer of this domain to any parties at this time.

Thanks for your considerations.

His domain was registered in 2009, around the same time Atlas started plugging its movie, so it was a more clear-cut case of cybersquatting.

Facebok.com given to Facebook despite “theft” claim

Kevin Murphy, May 30, 2011, Domain Policy

ICANN says registrar contract trumps national court. Registrar warns of legal consequences.

The typo domain name facebok.com has finally been returned to Facebook, over eight months after it was subject to a successful cyberquatting complaint.

The domain does not currently resolve, but Whois records show it was transferred to Facebook from its previous registrant, one “Franz Bauer”, last Thursday.

The case was marked by controversy, after ICANN threatened to shut down its sponsoring registrar, EuroDNS, for failing to transfer the domain last within 10 days, as required by UDRP rules.

EuroDNS had resisted the transfer after being named in a lawsuit, in its native Luxembourg, filed by a suspicious Panama shell company going by the name Facebok.com. The plaintiff claimed the domain had been “stolen” by Bauer.

But ICANN told the registrar last week that the Registrar Accreditation Agreement only allows the registrar to defer a transfer if the original registrant – not a third party – sues.

In a letter noting that EuroDNS is “a long-standing and respected member of the ICANN community”, the ICANN compliance department said:

the only kind of documentation that will stop the registrar from implementing a panel decision ordering a transfer is evidence that the registrant/respondent has commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under UDRP Rules. The mere filing of a complaint by a third party does not excuse the registrar from fulfilling its obligations under the policy.

in recognition that there has been a court filing, ICANN must reiterate that failing to comply with the relevant contractual provisions of the RAA subjects EuroDNS to escalated compliance action up to and including termination of the EuroDNS accreditation.

That seems to have been sufficient clarity for EuroDNS to push through the transfer, but the registrar is not happy about the situation, which may leave it in a tricky legal position in Luxembourg.

In a reply to ICANN, EuroDNS CEO Xavier Buck suggested that the story may not be over yet:

the action you demand from EuroDNS will have tremendous consequences for our company in the pending judiciary case.

Consequently, EuroDNS reserves all rights to seek indemnification from ICANN for any damages or loss caused by the action we have been forced to take not to lose our Registrar accreditation.

The lawsuit was filed last September, just days after the UDRP case was decided, but has not yet gone to court.

Under its previous ownership, facebok.com redirected to a series of scam sites that may have proved rather lucrative.

Cialis maker files UDRP on over 200 domains

Kevin Murphy, May 25, 2011, Domain Policy

Eli Lilly seems to have filed a single UDRP complaint covering 209 domain names that all contain its Cialis trademark.

The contested domains include duffers such as bestcialisinfoguide.com, cialisblogfeed.net and affordablecialistips.com.

Based on a sample, they all appear to be affiliate splogs pimping pills for the Belize-based mail-order pharmacies Pharm4All and Generics4All.

They all appear to have been registered in September 2010 by the same Moscow-based registrant.

While such large cases are not unheard of, they still constitute a material chunk of the annual UDRP workload. WIPO, for example, processed 4,370 domains last year.

This particular complaint was filed with the National Arbitration Forum, which has not yet disclosed the complainant. It’s pretty obviously Lilly, or the biggest chancer on the planet.

Lilly is a fairly strict enforcer of its trademarks. Its number of UDRP complaints to date is around the 100 mark, and most of those related to the Cialis brand.

The company is also one of those pushing most heavily for greater law enforcement take-down powers over “fake pharma” domain names.

A UDRP decision to scare the pants off domainers

Kevin Murphy, May 23, 2011, Domain Policy

Is this the most blatant case of UDRP abuse you’ve seen?

A company has won a generic domain name using a trademark it has had registered for less than a year, despite the fact that the current registrant has owned it for well over a decade.

The domain medicalexpo.com was first registered in 1997. It has been in the control of the same registrant since at least 2000, according to historical Whois records, but has never resolved to a web site.

The complainant, Benoit Thiercelin, who has has a history of attempted reverse domain name hijacking, was granted a European trademark on the term “Medical Expo” in June 2010.

In April 2011, Thiercelin filed a UDRP complaint with the little-used ADR Center of the Czech Arbitration Court, citing its European trademark and a US trademark as proof of its rights.

The US trademark was not fully “registered” until May 3, 2011, a month after the UDRP was filed, according to USPTO records.

On May 15, CAC ruled in his favor and awarded him the domain.

The panelist, Joseph Cannataci, found that the domain was registered “or at least re-registered” in bad faith, simply on the grounds that it had never been used.

If one is in good faith when registering a domain name, then the intention is understandably to use it for the purposes of one’s business or activity. If it remains unused for an unreasonable length of time then such registration is open to accusation of constituting “passive holding”. Irrespective of whether the domain name was registered before or after some of the Complainant’s marks, the current holder of the domain name does not seem to have used it or currently be using it.

The decision goes on to refer to the domain as a “TLD”.

The registrant did not help his cause by not responding to the complaint.

But it beggars belief that a UDRP panelist could infer bad faith registration of a generic domain that was registered 13 years before the complainant first acquired a trademark.

The idea that “re-registration” – presumably the panelist means the domain was renewed at some point after the trademark rights were acquired – could show bad faith does not even hold water.

The domain has been due to expire in 2012 since at least 2008, historical Whois records show. The registrant clearly bought a multi-year registration at some point before then, likely in 2002.

The complainant did not form his Medical Expo company until 2009, and did not file for his trademarks until December 2009 and February 2010. The registrant has not renewed the domain since then.

What we have here is a generic domain name, registered for 14 years, seized by complainant with only recently acquired rights, based on non-use and a flimsy piece of panelist reasoning.

Under other circumstances, it would be a slam-dunk case of reverse domain name hijacking.

In fact, Thiercelin has form when it comes to domain hijacking.

Last year, WIPO ruled that that he had attempted to use UDRP to hijack VirtualExpo.com, which also had been registered 10 years before he acquired his trademark rights.

The case was virtually identical to the MedicalExpo.com case, but the panelist ruled in exactly the opposite way, saying:

In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.

Can anybody say “forum shopping”?

This should be enough to scare the pants off of any domainer.

Dr Martens grabs “sucks” domains from Dr Marten

Kevin Murphy, May 18, 2011, Domain Policy

Shoemaker Dr Martens has won three “sucks” domains from a registrant that may actually be a genuine doctor called Marten.

The company won a UDRP case over drmartensucks.net, as well as the .org and .info equivalents.

The name and address in the Whois records for the domains correspond to a cosmetic surgeon in San Francisco named Dr Timothy Marten (rather than Martens).

The Whois could of course be fake, but what we may have here is a case of a defensive registration made by an individual worried about his reputation being challenged and won equally defensively by a company worried about its reputation.

The respondent did not respond to the complaint, so we’ll probably never know. All three domains were parked with Go Daddy.

Oddly, the .com variant of the domain was not part of the case, and still belongs to the same original “Dr Marten” registrant.