Cash-for-gold site seizes “sucks” domain

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

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

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

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

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

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.

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

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.

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)

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.

Will new TLDs be delayed by the trademark owner outcry?

Yesterday’s flood of criticism from big trademark holders has put another question mark next to ICANN’s plan to finalize the new top-level domain application process this year.
Heavy-hitters including Microsoft, AT&T, Time Warner, Adobe and Coca-Cola filed strong criticisms of the trademark-protection mechanisms in version four of the Draft Applicant Guidebook, and urged ICANN to delay the new TLD launch until the perceived weaknesses are addressed.
The concerns were echoed by the Motion Picture Association of America, the International Olympic Committee, Nestle, the International Trademark Association, Lego, the World Intellectual Property Organization, the American Intellectual Property Law Association, News Corp, the BBC and the American Bankers Association, among others.
Two ICANN registrars, MarkMonitor and Com Laude, also threw in with the anti-DAGv4 crowd. Indeed, MarkMonitor appears to have orchestrated at least a part of the trademark owner commentary.
It’s clear that many IP owners feel they’re being ignored by ICANN. Some organizations, notably WIPO and Time Warner, filed scathing criticisms of how ICANN makes policy.
These aren’t insignificant entities, even if some of their comments read like cases of throwing toys out of the pram.
After conversations with others, I know I’m not the only one who believes that this outcry could add delay to the new TLD process.
It certainly casts doubt on comments made by ICANN chair Peter Dengate Thrush in Brussels last month to the effect that the trademark protection portions of the DAG were very close to being finalized.
Trademark owners, including most of the outfits listed above, are concerned that the Uniform Rapid Suspension policy, designed to create a faster and cheaper version of the UDRP, has become bloated and now in some cases could take longer than a UDRP proceeding.
They also don’t think the Trademark Clearinghouse, a database of brands maintained by ICANN that new TLD registries would be obliged to protect, goes far enough to protect their marks. The previously proposed Globally Protected Marks List seems like a preferred alternative.
ICANN currently hopes to have the final guidebook close to readiness by its public meeting in Cartagena, Colombia, this December. Its board of directors will meet over a weekend in September to try to knock the document into shape. I don’t envy that task.
There’s a possibility, of course, that ICANN will soldier on with its time-line regardless. Dengate Thrush indicated in an interview last month that he did not want trademark issues to delay the launch any more than they have already.
Asked about the IP lobby’s concerns with the speed of the URS, he told the World Trademark Review:

I have conceptually no problem with making sure that expedited processes are available. If this one turns out to be too slow, we’ll do something else. What we can’t have is the hold up of the entire process until this is resolved.

It’s wait and see time again, but at the very least I think it’s pretty clear that the new TLD launch timeline is more in doubt today than it was 24 hours ago.