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RapidShare loses rapid.org case

Kevin Murphy, September 8, 2010, Domain Policy

RapidShare has failed to grab the domain name rapid.org with a UDRP complaint.

The WIPO decision, sent to me this morning by the current registrant, found both an absence of confusing similarity and a lack of bad faith.

Panelist Matthew Harris recently handed rapidpiracy.com to RapidShare on the grounds that the domain was conceptually similar to the RapidShare trademark.

He found no such similarity on this occasion.

Insofar as there is similarity, it resides in the common use of the word “rapid” alone. On the evidence before the Panel, this is insufficient. The Complainants have failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.

Rapid.org, prior to the filing of the complaint, was a web forum devoted to sharing download links for pirated movies, music and so on. RapidShare used this fact to try to prove bad faith.

But the panelist focused instead on registration dates, observing that the domain was first registered in September 2003, years before RapidShare acquired its trademark rights.

The Complainants do not point to a trade mark registration that pre-dates September 2003. In the circumstances, the Complainants’ apparent assertion that its trade mark rights pre-date the Domain Name registration appears to be simply false.

RapidShare appears to have missed a trick here.

Harris wrote that there was no evidence before him that the domain was first registered in 2001, as the registrant had claimed, and that there was no evidence that the domain had changed hands since then.

A quick search on DomainTools shows that rapid.org was indeed first registered in 2001, and that the current registrant probably only acquired it some time in 2009.

Why Harris was not given this information is probably due to RapidShare’s oversight, but it could have led to a finding of bad faith (not that this would have changed the ultimate outcome).

Amusingly, the decision also refers to the Russian registrant, Ilya Efimov, as a woman throughout. He assures me that, like all Ilya’s, he’s male.

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.

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.

World of Warcraft player ganks UDRP complainant

Kevin Murphy, August 17, 2010, Domain Policy

An aviation safety consulting firm has lost its UDRP case against a gamer who used its company name for his World of Warcraft guild.

Wyvern Consulting went after wyvern.com, which was registered by its current owner back in 2005.

The registrant said he’d originally registered the name for a possible business venture, which fell through, and then decided to use it for his WoW guild instead.

The National Arbitration Forum panelist found that while Wyvern proved the name was confusingly similar to its common law trademark, and that the registrant lacked legitimate interests in the domain, it had failed to prove bad faith.

Complainant does not have a registered trademark, and offers no proof of consumer confusion or loss of business. Respondent’s proof of its current use is minimal, but the burden is upon Complainant on this issue. Respondent’s use of the disputed domain name as a forum and e-mail service for its World of Warcraft guild does not establish that Respondent registered and used the disputed domain name in bad faith

The domain in question currently appears to be unused, although archive.org shows a WoW guild page back in 2008.

Domainers get love, but no refunds for .co cybersquatters

Kevin Murphy, August 10, 2010, Domain Registries

.CO Internet has ramped up its anti-cybersquatter messaging, promising no refunds for trademark-infringing .co registrants, no matter how much they paid for their domains.

An “Open Letter to .co Domain Registrants”, published by the company yesterday, also contains a shout-out to domainers, which I think may be a first from a domain registry.

The letter points out, as I have previously, that .co is subject to the UDRP on the same terms as other TLDs including .com.

The outcome of a UDRP proceeding is binding, and no refunds will be given under any circumstances — regardless of how much money you may have paid to secure the domain; whether the domain was acquired directly via a domain registrar or through a domain auction venue; and whether you were unaware that you had infringed on someone else’s rights.

There’s similar text on the front page of COauctions.com, where the registry is currently auctioning off contested landrush applications.

Is this just a matter of legal ass-covering? Or are there some gray-area domains in the landrush auction?

Despite all the promotional work the registry performed in the run-up to general availability, there are still plenty of people who seemed to believe .co represented new, lawless territory.

The letter ends with the statement that “.CO Internet is committed to protecting the rights of brand owners, domain investors, and end users.”

Domainers getting some love in the same breath as brand owners is not something you hear every day, particularly from registries.

Cash-for-gold firm aims UDRP at “sucks” site

Kevin Murphy, August 6, 2010, Domain Policy

An Arizona cash-for-gold company has filed a UDRP claim against a gripe site that says it “sucks”.

HBT Investments, which does business at valleygoldmine.com, has filed its claim with WIPO against the owner of valleygoldminesucks.com.

The gripe site isn’t particularly exciting. It’s a blog with two entries, both dating from May 2009 and both primarily questioning the objectivity of an ABC news report.

The registrant probably has a strong defense.

There’s oodles of UDRP precedent protecting “sucks” sites, mainly on the grounds that there’s nothing “confusingly similar” about a domain that treats the trademark owner with contempt.

Valley Goldmine has a Better Business Bureau A+ rating displayed prominently on its web site, so it obviously values its reputation, which is fair enough.

But filing a UDRP against a gripe site does have the unfortunate effect of making it look like you’re trying to stifle free speech.

Valleygoldminesucks.com is, however, the second domain name that appears when one Googles for “valley goldmine”, which is probably more of a concern.

Massive BackCountry.com UDRP case ignores rude typos

Kevin Murphy, August 2, 2010, Domain Policy

Amusingly, a huge 41-domain typosquatting UDRP case just filed by BackCountry.com contains none of the obvious, profane typos.

The claim, apparently filed by an outdoor equipment retailer, covers typos such as backxountry.com, backcountru.com and even backc9untry.com.

It does not include the typo that first occurred to me. You know the one I mean.

That domain exists, and is currently parked with suggestive, adult-oriented ad links.

In fact, none of the 41 domains listed in the National Arbitration Forum claim contain the particular four-letter Shakespearean pun that I’m thinking of.

New UDRP provider headed by “ace cyber lawyer”

Kevin Murphy, July 30, 2010, Domain Policy

A new Indian group appears to have applied to become ICANN’s fifth approved UDRP provider.

The New Delhi-based Indian Technology Mediation & Arbitration Center is headed by ICANN veteran Pavan Duggal, who describes himself as “India’s ace cyber lawyer”.

ITMAC has 18 wannabe panelists listed on its web site, some of whom are said to have previously mediated domain name disputes for the World Intellectual Property Organization and Asian Domain Name Dispute Resolution Centre.

The outfit says it will be able to mediate disputes in a dozen or so Indian languages, as well as English, and would be able to handle internationalized domain names.

The base price for a single-domain, single-panelist case would be INR 106,000, roughly $2,279 at today’s exchange rates.

That’s actually almost quite a lot more expensive than WIPO, say, which charges $1,500 for an equivalent service. Quite surprising really – one lakh goes a lot further in India than in the US.

ICANN’s board of directors has the item “Receipt and Posting for Public Comment of the Application to be a New UDRP Provider” on the agenda for its meeting next Thursday.

(Via Managing Internet IP)