Rumor sites fair game under UDRP

Could Apple shut down MacRumors.com using the Uniform Dispute Resolution Policy?
That seems like a fair interpretation of a recent WIPO decision over the domain name LegoRumors.com, which was handed over to Lego Juris, maker of the popular toys.
LegoRumors.com leads to blog-style news site, not many months old, that reports on Lego products.
The site is a bit of a mess – poorly written, spammy, and ad-heavy. You’d have to be nuts to think it was an official Lego site.
It does appear to contain original content, and does not look to me like the kind of clear-cut cybersquatting that the UDRP was intended to address.
Lego succeeded in seizing the domain, regardless. The WIPO panelist (in a decision that could also have used a run through a spell-checker) found:

The disputed domain name consists of two different words, one consisting of the Complainants registered trademark and other of a generic term “rumors”. The Panel considers that the addition of the generic denomination, especially when added to a famous trademark is not sufficient to avoid confusion.

Pay attention, “rumors” sites.
The panelist also found that the domain name was registered in bad faith, on the basis that the registrant clearly was aware of Lego’s trademark (because he’s writing about Lego) and because the site contained sponsored links to potential competitors.
Apply this logic to MacRumors.com, which knowingly uses an Apple trademark in its domain name, writes about Apple products, and currently shows ads for BlackBerry and Adobe products that compete with Apple.
I’m not suggesting for a second that MacRumors is in any danger of losing its domain, but if the UDRP was implemented equitably, this case could be seen as scary precedent.

TorrentReactor.net wins TorrentReactor.com case

The World Intellectual Property Organization has handed the domain name TorrentReactor.com to the owner of TorrentReactor.net, one of the internet’s most-popular BitTorrent movie piracy sites.
Really.
TorrentReactor.net owner Alexey Kistenev filed a UDRP complaint over the .com version with WIPO last year and won it earlier this month.
It was actually the second time he had taken the domain to arbitration.
Kistenev’s first complaint was dismissed by WIPO in March 2009, on the grounds that he did not have a valid trademark.
A month later, he applied for a US trademark on “TorrentReactor”, which was granted in July last year, and the UDRP was refiled in October.
In the latest case, Kistenev was helped by not only the fact that he now owns the trademark but also the fact that the domain has changed hands since the original complaint.
I wonder how much the current owner paid. In 2008, the then-owner had tried to sell it to Kistenev for $150,000. When he countered with a $30,000 offer, the owner asked for $50,000.
TorrentReactor.net is a page-one Google hit for searches including [torrent movies] and [torrent music].
Its front page contains links to torrents of recent, copyrighted movies such as The Social Network, Red and Let Me In, as well as new software, TV shows and music.
What we seem to have here is a case of WIPO indirectly helping piracy.
I guess it shows that WIPO arbitration panels can apply the UDRP uniformly when they want to.

Businesses to object to Arab UDRP provider

ICANN’s business constituency is to object to a new Jordan-based UDRP provider, saying that no new providers should be approved until rules governing their behavior are put in place.
The BC reckons that UDRP decisions need to be more consistent and predictable, and that a good way to achieve this would be with standard accountability mechanisms.
In a draft position statement, expected to be finalized and filed with ICANN tomorrow, the BC says that it:

strongly advocates that ICANN must first implement a standard mechanism with any and all UDRP arbitration providers that defines and constrains their authority and powers, and establishes regular and standardized review by ICANN with flexible and effective means of enforcement.

Its comment is expected to be filed in response to the Arab Center for Domain Name Dispute Resolution’s request for official recognition as a UDRP provider last month.
The BC does not appear to object to the ACDR on its own merits or on the basis of its location.
The statement notes that registrars are bound by contracts setting the rules for domain registrations, but that UDRP providers can force transfers unconstrained by any ICANN guidelines or oversight.
It’s well-known that UDRP decisions from the various existing providers are currently about as predictable as flipping a coin, with panelists frequently interpreting the rules along quite different lines.
The BC seems concerned that this could be exacerbated as more UDRP providers are approved and as new TLD registries start popping up in different countries.
The draft statement notes that currently about 99% of UDRP cases are heard by WIPO and NAF, and that most gTLDs are “based in a limited number of national jurisdictions”.

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.