[Random-bits] UDRP - "The Penguin" and Penguin Books

James Love love@cptech.org
Wed, 02 Aug 2000 16:03:18 -0400

Subject: UDRP - "The Penguin" and Penguin Books
   Date: Wed, 02 Aug 2000 16:02:06 -0400
   From: James Love <love@cptech.org>
 Organization: http://www.cptech.org
        To:  NCDNHC <NCDNHC-Discuss@lyris.isoc.org>


This looks like a decent decision.

Penguin Books Limited is a large publisher of paperback books, and the
owner of penguin.com.

Anthony Katz is known to his friends as "the Penguin."   He had
registered penguin.org  He also appeared to have been very well
represented in the WIPO proceeding.  His side told the panel:

        i. Anthony Katz was known as "Penguin" long before said domain
<penguin.org> was registered.

        ii Mr Katz has made only two uses of the said domain name
<penguin.org>, firstly as a personal e-mail address and secondly as the
address of a personal www site. [Avery Dennison Corp. v. Sumpton, 1999
WL 635767 (9th Circuit. August 23, 1999), use of names a e-mail
addresses does not constitute commercial use] 

        iii. Mr Katz registered said domain name <penguin.org> to
establish a
www site dedicated to penguins (the birds).


        xii. Mr Katz is not a cybersquatter: he is known as "Penguin";
he did
not register the other domain names <penguinland.org> (registered August
24, 1998); <penguinland.com> (registered October 5, 1998) and
<penguinland.net> (registered October 5, 1998) with the intention of
re-sale. His circumstances can be distinguished from the position of the
Respondent in Nabisco Brands Company v. The Patron Group, Inc. WIPO Case
No. 2000-0032, February 23, 2000, David W. Plant, Presiding Panelist, as
in that case the Respondent owned at least 53 domain names identical or
virtually identical to registered U.S.A. trade marks of other companies
such as Nestle, General Mills, Nabisco, AT&T, Pfizer, Proctor & Gamble
and Warner-Lambert. In that case the Complainant established a
continuous and obvious pattern of cybersquatting whereas Mr Katz
registrations do not even remotely approach the pattern reviewed in
Nabisco Brands.

        xviii. Hundreds, if not thousands of domain names have been
in the name of families. It is not wrongful conduct so to do.

        xix. When registering a domain name, there is no obligation to
the nature of the entity identified as the registrant. There is no
obligation under Texas law to register an alias of an individual or
entity such as a partnership that does not conduct any business or
commercial activities whatsoever.

        xx. There is no evidence that Mr Katz registered the domain name
in the
name of the Katz Family to conceal his identity, as the WHOIS database
identifies him as the administrative contact and provides his e-mail
address at his current place of employment.

        xxi. The word "Penguin" and the mascot character "Tux" have
irreversibly associated with the LINUX computer system. Accordingly
there is no bad faith in Mr Katz electing to show his personal
allegiance to the LINUX operating system by posting an image of Tux on
his homepage.

        xxii. Non commercial sites often identify the software that
the site Mr Katz has elected to identify the LINUX software and he gives
a number of examples of other sites that do this.


In finding for Anthony Katz, who was permited to keep penguin.org, the
WIPO panel noted:

        "This Administrative Panel is reluctant to engage in the
activity of
policing how much development the owner of a clearly personal Web site
must do, in the absence of any other evidence of bad faith. Any attempt
to apply any objective minimum standards for development could well
impose a significant economic burden on innocent registrants as a
precondition of holding their domain names. 

Possible NCC resolution language:

1.  WIPO was correct in permitting Anthony Katz to retain the use of

2.  There was nothing on the Penguin.org page that would lead one to
believe that it was the publisher of Penguin Books.

3.  There are many legitimate uses of the word Penguin, including, for
example, web pages about Penguin birds or about Linux, software which
uses Penguins as a mascott, not to mention Penguin sporting or social

4.  An expansion of the TLD space, creating such TLDs as .books, .birds,
.software or other TLDs, would help avoid such disputes.

5.  ICANN should not be in the business of deciding whether or not the
Penguin domain should be used for the sale of books, for a site devoted
to the Penquin birdds, to promote sporting teams, for Linux software, or
for personal use.  These are all legitimate uses of the word Penguin.

6.  In this case, it appears as though the respondent was well
represented. NCC is concerned about cases where the respondent is not
able to obtain effective representation.  

James Love, Director           | http://www.cptech.org
Consumer Project on Technology | mailto:love@cptech.org 
P.O. Box 19367                 | voice: 1.202.387.8030
Washington, DC 20036           | fax: