Latest news of the domain name industry

Recent Posts

Cash-for-gold site seizes “sucks” domain

Kevin Murphy, October 19, 2010, Domain Policy

An Arizona cash-for-gold company has successful recovered a “sucks” domain name via UDRP, after it emerged that the anonymous gripe site was actually run by a competitor.

Valley Goldmine filed the UDRP complaint against the domain valleygoldminesucks.com back in August. As I reported, the contested domain contained a mere two blog posts, both dating to May 2009.

Up until about a month ago, the registrant’s identity was protected by Go Daddy’s privacy service.

But Valley Goldmine used a subpoena to identify the actual registrant, and it turned out to be the operator of Gold Stash For Cash, a direct competitor, which does business at goldstash.com.

The site was created after a local TV news report had ranked Valley Goldmine higher than GSFC in an “investigation” into cash-for-gold companies. The blog posts, ironically, attacked the report’s objectivity.

Despite precedent largely protecting “sucks” domains on free speech grounds, this was enough for WIPO panelist Maxim Waldbaum to find against the registrant on all three requirements of the UDRP.

Interestingly, Waldbaum used the fact that the domain satisfied the “bad faith” part of the UDRP to justify the “confusingly similar” criterion.

The associated website has high placement on search engine results for the Mark and is operated by the principal of a direct competitor of Complainant. Respondent’s use of the Disputed Domain Name in this context is precisely within the list of bad faith criteria under paragraph 4(b) of the Policy, which, in this Panel’s view, clearly indicates Respondent’s intent to create confusing similarity in the minds of Internet users.

The fact that GSFC stood to benefit financially from anonymously bad-mouthing its competitor clearly over-rode any free speech concerns, which does not seem unreasonable.

The panelist concluded:

Although cloaked in the mantle of a gripe site, Respondent’s website is quite clearly a platform for Respondent to cast aspersions on the reliability of a report that portrayed his company in a negative light and his competitor in a positive light, and to otherwise sling mud.

Amusingly, while GSFC appears to own goldstashforcashsucks.com, a third party owns goldstashsucks.com.

Delhi Commonwealth Games wins UDRP

Kevin Murphy, September 28, 2010, Domain Policy

With five days to go before the Commonwealth Games kicks off in Delhi, the organizers may be under fire for expecting athletes to live like squatters, but they have managed to beat off one cybersquatter.

(Do you see what I did there?)

The Organising Committee of the games has been handed delhi-commonwealth-games.com in a UDRP proceeding against an anonymous registrant handled by WIPO

It looks like a fairly straightforward case. The web site, which has content, appears on the first page of Google for [delhi commonwealth games]. The WIPO panelist said its use of commercial links showed bad faith.

The official domain of the games is the rather less SEO-friendly cwgdelhi2010.org.

Interestingly, the Committee became aware of the domain in April 2009 and its first move was to ask the registrar, Directi, to block it, which it refused. It was well over a year later when the UDRP claim was filed.

Delhi was awarded the Commonwealth Games in 2003. The domain was registered in 2006.

The city has recently come under fire for its apparent lack of preparation, offering arriving athletes accommodation well below par from a health and safety perspective.

Revlon gets the UDRP bug

Kevin Murphy, September 22, 2010, Domain Services

Revlon has become the latest company to start aggressively enforcing its trademarks via the UDRP.

The company has over the last few months filed 24 complaints with WIPO, covering 29 domains, most of which appear to be parked.

Apart from a couple of typos, the domains all contain the Revlon trademark in full, along with another noun or two, and look like slam-dunk cases.

It has already won a couple of cases, such as revlonhairproducts.com, which I expect the panelist could have adjudicated in her sleep.

RapidShare’s UDRP campaign seizes 44 domains

Kevin Murphy, September 17, 2010, Domain Policy

The final results are in. RapidShare’s recent campaign to reclaim its brand from the pirates using the UDRP appears to be over, and it had about a 90% success rate.

Over the last few months the file-hosting company filed 46 UDRP complaints, covering a total of 49 domains, and it managed to win all but five of them.

The vast majority of the contested domains, 43 in total, contained the word “rapidshare”, which RapidShare has trademarked.

The company won all of them with one notable exception: rapidshare.net. The panelist in that case found that the domain had been registered before RapidShare had acquired its rights.

The remaining six domains just contained the term “rapid”. In these cases, the company had a harder time proving its case and therefore had mixed results.

It lost its complaints over rapiddownload.net, rapidbay.net, rapid4me.com and rapid.org largely on the grounds that “rapid” is not sufficiently confusingly similar to “rapidshare”.

However, it managed to win rapidpiracy.com on the dubious basis that “piracy” and “share” are conceptually similar, as I blogged earlier this month.

It also managed to secure rapidpedia.com, on the even more dubious (and barely discussed) grounds that the domain “replicates the first and dominant element of the trademark”.

All of the complaints were handled by WIPO.

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.