Massive BackCountry.com UDRP case ignores rude typos

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”

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)

.XXX domain contract could get approved next Thursday

The application for the porn-only .xxx top-level domain is on the just-published agenda for ICANN’s board meeting next Thursday.
The line item reads merely “ICM Registry Application for .XXX sTLD”, but I’m told that ICM and ICANN staff have already negotiated a new contract that the board will be asked to consider.
If the board gives it the nod, it would keep the .xxx TLD on track for possible delegation at ICANN’s Cartagena meeting in early December, meaning sales could begin as early as the first quarter 2011.
According to last month’s Brussels resolution, the board has to first decide whether the contract complies with previous Governmental Advisory Committee advice, or whether new advice is required.
If ICM jumps that hurdle, the contract will be published for public comment (fun fun fun) for three weeks to a month, before returning to the board for a vote on delegation.
Also on the agenda for the August 5 board meeting is the issue of whether to give Employ Media the right to liberalize its .jobs TLD and start accepting generic domain registrations.
In the HR industry, the .jobs debate has been just as loud as the .xxx controversy was in the porn business. Some companies think the changes would be unfair on existing jobs sites.
There are a few other intriguing items on next Thursday’s agenda.
The board will discuss the “International Dimension of ICANN”, “Data & Consumer Protection” and “UDRP Status Briefing”, all of which strike me as rather enigmatic, among other topics.
The UDRP item may refer to the ongoing debate about whether ICANN needs to have contractual relations with its UDRP providers.

Yes, .co domains are subject to the UDRP

I’ve been getting a fair bit of search traffic over the last few days from people evidently wondering whether .co domain names are subject to the same UDRP rules as .com, so I thought I’d answer the question directly.
Yes, they are.
For avoidance of doubt, I’ve just talked to .CO Internet’s director of marketing, Lori Anne Wardi, who had just talked to the registry’s policy people.
She told me that .co domains are subject to the exact same ICANN UDRP as .com.
If you’re a .co registrant, you’re bound to the policy the same as you are in .com. If you’re a trademark holder, you file a complaint in the same way.
The only difference at the moment is that .CO Internet has contracted with only one UDRP provider, WIPO, but Wardi said that more providers may be signed up in future.

Using Go Daddy equals “bad faith” registration

Registered a domain name with Go Daddy recently? Unless you’ve updated your name server settings, you’ve automatically committed a “bad faith” registration.
At least, that’s the conclusion I’m drawing from a couple of recent clueless UDRP decisions.
The most recent example is the case of Churchill Insurance, which just won churchillimports.com, following a proceeding with the National Arbitration Forum.
The registrant claimed he planned to use the domain, which he registered just six months ago, to sell cigars. Seems reasonable. Other sites sell cigars using the name “Churchill”.
But the NAF panelist, Flip Petillion, wasn’t buying it:

Respondent uses the churchillimports.com domain name to resolve to a directory website that displays links to third-party websites, some of which provide insurance products and services that compete with Complainant’s business.
…
it is shown on a balance of probability that Respondent uses the disputed domain name to operate a directory website and, thus, profits from this use through the receipt of “click-through” fees. Accordingly, the Panel finds that this use constitutes bad faith registration and use pursuant to Policy
…
as the disputed domain name was registered after the registration of Complainant’s established trademark rights and given the fact that Respondent’s website employs insurance themed links that resolve to websites of Complainant’s competitors, Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the CHURCHILL mark.

What Petillion clearly failed to realize – or decided to conveniently ignore – is that everything he ascribes to the registrant was actually caused by default Go Daddy behavior.
Churchill sells car insurance in the UK. The registrant is an American, from Georgia. There’s a very slim chance he’d ever heard of the company before they slapped him with the UDRP.
But Petillion decided that the fact that insurance-themed links were present on the site shows that the registrant must have known about the company. Like he put the links there himself.
He concludes the registrant had “bad faith” because Go Daddy’s parking algorithm (I believe it’s operated by Google) knows to show insurance-related ads when people search for “churchill”.
In addition, churchillimports.com is the default parking page that Go Daddy throws up whenever a domain name is newly registered.
The registrant didn’t need to do anything other than register the name and, according to this bogus ruling, he’s automatically committed a bad faith registration.
Where does NAF find these people?
I’m sure I’m not the first to notice this kind of behavior, and I’m sure Go Daddy’s not the only registrar this affects.

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.

RapidShare files UDRP claim on Rapid.org

RapidShare, confidence bolstered by a number of recent UDRP wins against domains that contain its trademark, has now turned its attention to some more dubious challenges.
The German file-sharing service has lately filed UDRP claims on the domains rapid4me.com, rapidownload.net, rapidpiracy.com and rapid.org, none of which contain its full “rapidshare” trademark.
The sites in question all relate to sharing files (mostly copyrighted works) on RapidShare. Rapid.org bounces visitors to Bolt.org, a file-sharing forum for predominantly pirated content.
It’s a bit of a stretch to see how any of these domains could be seen to be confusingly similar to the RapidShare trademark. But not, I think, a stretch too far for many UDRP panelists.
Ironically, Rapid.org, which must be worth a fair bit on the aftermarket, was originally registered in 1997 by an IP-protection company.
RapidShare has filed dozens of UDRP claims over the last few months, initially targeting file-sharing sites that utilized rival services, before broadening its campaign to also hit RapidShare-centric sites.

Lego launches attack on new TLDs

Could little yellow plastic men be the death of the new top-level domain process?
Toymaker Lego has filed a scathing criticism of ICANN’s latest Draft Applicant Guidebook for prospective new TLD registries, saying it ignores trademark holders.
Lego, one of the most prolific enforcers of trademarks via the UDRP, said that the latest DAG “has not yet resolved the overarching trademark issue”.
DAG v4 contains new protections designed to make it easier for trademark holders to defend their rights in new TLD namespaces. But Lego reckons these protections are useless.

The Trademark Clearinghouse is NOT a rights protection mechanism but just a database. Such a database does not solve the overarching trademark issues that were intended to be addressed.

Lego also says that the Uniform Rapid Suspension service outlined in DAG v4 is much weaker than it wanted.
“It doesn’t seem to be more rapid or cheaper than the ordinary UDRP,” Lego’s deputy general counsel Peter Kjaer wrote.
Lego thinks that a Globally Protected Marks List, which was at one time under consideration for inclusion in the DAG, would be the best mechanism to protect trademarks.

ICANN still seems to ignore that cybersquatting and all kinds of fraud on the internet is increasing in number and DAG 4 contains nothing that shows trademark owners that ICANN has taken our concerns seriously.

The comment, which is repeated verbatim in a letter from Arla Foods also filed today, is the strongest language yet from the IP lobby in the DAG v4 comment period.
Rumblings at the ICANN meeting Brussels two weeks ago, and earlier, suggest that some companies may consider filing lawsuits to delay the new TLD process, if they don’t get what they want in the final Applicant Guidebook.
ICANN’s top brass, meanwhile, are hopeful of resolving the trademark issues soon, and getting the guidebook close to completion, if not complete, by the Cartagena meeting in December.

RBS wins totally bogus UDRP complaint

The Royal Bank of Scotland has been handled control of the domain rbscout.com in a UDRP decision I have no trouble at all describing as utterly bogus.
RBS, naturally enough, owns a trademark on the term “RBS”. Its UDRP claim is based on the notion that a domain beginning with “rbs” is therefore confusingly similar.
For this to work, logically, the meaning of “rbscout” must be taken as “RBS cout”.
Cout?
The idea that the registrant actually had “RB scout” in mind does not appear to entered into the deliberation of the National Arbitration Forum panelist, Paul Dorf.
It took me all of two minutes with Whois and Google to determine that the registrant, The Auction Scout, is a player in the market for auctioning heavy machinery, and that RB, Ritchie Bros., is such an auctioneer.
There’s simply no way the registrant could have had RBS in mind when he registered the domain back in February.
So why did Dorf find evidence of bad faith?
Because the domain rbscout.com resolves to a default Go Daddy parking page, which displays advertising links to financial services sites including RBS’s own site.
So, just because Go Daddy’s algorithms are confused by the string “rbs” appearing in a domain, human beings would be similarly confused?
It defies common sense. Dorf should be ashamed of himself.

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.