RapidShare has no rights to “rapid”, says WIPO

RapidShare, the file-sharing service that recently embarked upon a spree of UDRP filings against domain name registrants, has lost its first such case.
A WIPO panelist denied the company’s claim on RapidBay.net, saying it had “not proved that they have any trademark or service mark rights in the expression ‘rapid bay’, or in the word ‘rapid'”.
RapidShare therefore failed to prove that “RapidBay” was identical or confusingly similar to its RapidShare trademark, and the complaint was thrown out.
The decision does not bode well for the company’s ongoing UDRP claims over rapid4me.com, rapidownload.net, rapidpiracy.com and rapid.org, among others.
Rapid.org’s registration, in particular, would appear to be safe, if the panelist in that case follows the same line of reasoning.
That will no doubt please the many people visiting my previous post recently, apparently looking for an explanation of why Rapid.org, a forum for sharing mainly copyrighted works, recently started bouncing to Bolt.org.
RapidShare has in recent months filed a couple dozen UDRP complaints against people who have registered “rapid” domains and are using them to help people find pirated material on the service.

Red Bull wins court case but loses UDRP

Energy drink maker Red Bull has somehow managed to lose a UDRP complaint over the domain name taurusrubens.com, despite having already won a lawsuit against its current registrant.
“Taurus Rubens” was the name of an air show slash performance art piece sponsored by Red Bull, performed at Salzburg airport in August 2003. There’s a clip here on YouTube.
The day before the show, an Austrian man named Reinhard Birnhuber registered taurusrubens.com and rubenstaurus.com and parked them with his ISP.
Two years later, when Red Bull got wise to the registrations, it offered Birnhuber €500 for them. He countered with a demand for a whopping €1 million.
That was in March 2005. One month later, Red Bull secured an Austrian trademark on the term “Taurus Rubens”. It then filed a UDRP complaint with WIPO.
Judging from that WIPO decision, it’s pretty clear that Birnhuber’s registrations were not entirely innocent.
Not only did he ask a ludicrous price for the domains, he also admitted to knowing about the air show when he registered them, he already owned redbullbag.com, and he gave a bunch of reasons about his plans for developing the domains that WIPO didn’t buy.
Nevertheless, because Red Bull had acquired its trademark rights years after the registrations, apparently just so it had standing under the UDRP rules, WIPO dismissed the complaint.
So Red Bull sued in an Austrian commercial court instead, and won.
Birnhuber appealed, and lost.
The court ruled that he had registered the domains in bad faith and that he should turn them over to Red Bull.
But he has apparently so far refused to do so. So Red Bull this year filed a second UDRP complaint with WIPO, asking for the domains to be transferred to it.
And, bizarrely, Red Bull lost.
WIPO this week denied the company’s complaint on the grounds that the the Austrian court’s ruling is irrelevant under UDRP rules, and that the 2005 WIPO decision should stand.
Here’s a Google translation of the relevant bits:

The panel can see in the above circumstances, no new facts or actions that would warrant a new assessment of the case. In this respect, the complainant fails to recognize that not only “new actions” to the resumption of proceedings are necessary, but this also has to be relevant.
…
The correct legal result is more than the enforcement of that ruling in Austria, especially as the present legal request (transfer of the domain name) covers with the sentencing order of the Austrian court. Since both parties are domiciled in Austria, is likely a priori, no specific enforcement problems arise. WIPO panels can so far do not replace the state authorities.

So, does Birnhuber get his €1 million? I doubt it. But right now he still owns taurusrubens.com.

RapidShare chases cybersquatters

RapidShare, the popular German file-hosting site, has filed six cybersquatting claims against people with the word “rapidshare” in their domains.
The UDRP complaints are either a sign that RapidShare is cracking down on pirated content, or an example of balls-out intellectual property chutzpah.
My guess is it’s the latter, for two reasons.
First, a search reveals dozens of popular sites with “rapidshare” in the domain, all serving RapidShare links to copyrighted content, none of which have had UDRP claims filed against them.
Second, each of the six domains RapidShare has filed claims for seem to provide links only to files hosted by competing services such as Hotfile.com or Uploading.com.
RapidShare.com is currently the 35th most-popular site on the internet, more popular than Craigslist, according to Alexa.
A German court ruled two years ago that it had to start deleting pirate content, and it has been playing whack-a-mole with the bootleggers ever since.
Now, it wants the World Intellectual Property Organization to help it protect its trademark. There’s irony for you.

WIPO’s UDRP market share lead narrows

The number of UDRP cases filed with the National Arbitration Forum dipped slightly last year, according to NAF numbers released today.
The organization said it received 1,759 filings last year, compared to 1,770 in 2008. Only 1,333 of the cases were actually heard; the others were dropped or settled.
While that’s a decline for NAF, it’s not quite as steep as the almost 10% drop experienced by rival arbitrator WIPO over the same period.
That said, WIPO is still the primary choice of companies trying to enforce their trademarks in the domain name system, saying last month that it received 2,107 complaints in 2009.
It was also the year of big multi-domain cases for both outfits.
WIPO handed 1,542 domains to Inter-Continental Hotels in a single case, while NAF transferred a relatively modest 1,017 domains to ConsumerInfo.com.

Allstate cybersquatter gets away with it for a decade

Allstate Insurance Company, a US insurer with over $30 billion in revenues, has just won a UDRP claim over AllstateInsurance.com, almost 10 years after the domain was first registered.
The company has been using the Allstate trademark for almost 80 years, and is currently the second-largest insurance company in America.
AllstateInsurance.com, the exact match of its company name as well as a combination of its trademark and its primary line of business, was registered in November 2000.
It is currently registered to a Korean individual named Seung Bum; he fought the UDRP claim unsuccessfully.
After a brief period being used by an apparently genuine insurance firm, the domain has been parked with PPC ads for other insurance companies for the best part of the last decade.
The volume of type-in traffic over than period must have been substantial, and one can only speculate how much revenue was accumulated.
All of which begs the question: why on earth did Allstate wait 10 years to file a UDRP claim?
It seems that cybersquatting, at least in this case, pays.

UDRP claim pits .me against .me.uk

The owner of GuestList.me.uk has filed a UDRP claim against the registrant of GuestList.me.
As far as I can tell, this is the first UDRP case to directly pit a company built on a .me.uk brand against the registrant of the .me equivalent.
GuestList.me.uk is a London, UK-based nightclub promotions site that has been using its domain since 2003.
GuestList.me, which does not currently resolve, was registered through LCM.com’s privacy service on July 18, 2008, during the first 24 hours of .me general availability.
Given that LCM is a UK-based registrar, it seems plausible that GuestList.me’s registrant is also British.
It will be interesting to see which way this decision goes. There’s plenty of opportunity for precedent.

WIPO wants tougher cybersquatting rules on new gTLDs

The World Intellectual Property Organization reckons ICANN should toughen its stance against new gTLD registries that allow cybersquatting.
The “trademark post-delegation dispute resolution procedure” or Trademark PDDRP would let trademark holders try to suspend new TLDs and receive compensation when a registry allows cybersquatting.
WIPO wants the burden of proof on trademark holders relaxed, making it much easier to file complaints.
Currently, the draft process would require complainants to show registries’ “specific bad faith intent” to profit from cybersquatting.
WIPO thinks this should be broadened to include deliberate recklessness.
“In seeking to give meaning to ‘intent,’ the criteria should, without as such imposing or implying any sweeping registry policing duty, also encompass instances of willful blindness,” WIPO wrote.
The comments came in response to ICANN’s public comment period on the process, which closes on Thursday.

Cyber cop wants Whois privacy shake-up

Registrars should be made to police Whois so cops can take down illegal sites faster, even if domain name prices have to go up as a result, ICANN’s Government Advisory Committee has been told.
Speaking at the GAC hearing on new gTLDs in Nairobi this afternoon, Paul Hoare of the UK’s Serious and Organised Crime Agency called for (continue reading)