CPT's Page of Selected Domain Name Disputes
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CPT's August 11, 2000 Comment on Terms of Reference, Procedures and Timetable for the Second WIPO Internet Domain Name Process
|In a dispute involving two competing astrological
consulting services a UDRP proceeding the National Arbitration Forum
panel ruled that though the domain name was confusingly similar to the
complainants trademark the respondent had a legitimate interest in the
name on the grounds that "astrocartography" is a generic term.
The respondent registered the domain names in order to publish a
website critical of CompUSA. In its complaint, CompUSA alledged that
the domain names were confusingly similar to its own and that they
were being used to disrupt its business, indicating a lack of
legitimate interest as well as bad faith. The single panelist
rejected CompUSA's arguement on all three criteria necessary to
transfer the domain name:
Complainant has failed to show that any of the three elements of Policy Paragraph have been violated. First, there is absolutely no confusion or similarity, much less identity, between the domain names and the trademarks held by Complainant. No one could confuse "COMPUSA", or anyone of the registered trademarks, and "STOPCOMPUSA.COM" and "BANCOMPUSA.COM". Complainant has also failed to show that Respondent has no rights or legitimate interests in the domain names. Respondent's rights clearly exist under the First Amendment. His right to offer criticism of the goods and services provided by Complainant are as legitimate as any commercial activity.In his summary the panelist commented on the proceeding:
After reading the pleadings, the Panelist is left with a bad taste. Here, a large company, faced with criticism from an individual, has attempted to use this process and procedure to stifle that criticism. If the actions and conduct of Respondent are wrongful, then Complainant has access to the courts of law, where the truthfulness of the allegations made by Respondent can be challenged. Use of this forum by Complainant in this context is inappropriate and constitutes "cyber-bullying."
In this UDRP/WIPO decision the single panelist ruled the domain name
be transferred from the respondent who sought to develop a website
about various cities named Barcelona throughout the world, to the city
of Barcelona, Spain. On the UDRP criterion of legitimate interest on the part of the respondent the panelist ruled that :
"... such right of interest is and will be always subject to the lack of disputes with parties having better rights or more legitimate interests as in this case."
|In this UDRP/WIPO decision the panel ruled for the
cancellation of the domain name. The action was brought by Tata Group
India, a multibillion dollar industrial company with a trademark on
"tata". The panel ruled that the Tata trademark "deserve[s] wide
protection" due to its "aura of high repute", and that
bodacious-tatas, a term that means "large female breasts" in parts of
the US, was confusingly similar to the Tata trademark.
Bridgestone-Firestone, the giant manufacturer of tires, owns
the domains bridgestone-firestone.com, ihatebridgestone.com,
ihatefirestone.com and bridgestonesucks.com. Jack Myers, a former
employee of Bridgestone, registered bridgestone-firestone.net, which
he uses as a consumer-employee forum. The web page has
section such as "What BFS doesn't want you to know." A WIPO
UDRP panel ruled that:
Respondent is not a licensee of the Complainants and is not otherwise authorized to use the Complainants' marks. However, the Policy sets forth examples of circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name, including:... making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. . .
|The domain name was transferred to the complainant, after Caterpillar, the industrial machinery manufacturer, maintained that the domain name was confusingly similar to caterpillar.com.
CNNdn - "the financial crash network" - is a satirical website that borrows the appearance of CNNfn - the CNN financial network - to comment on the state of the economy. According to a February 1, 2001 Wired News article, CNN alleged that CNNdn was a "textbook case of cyberpiracy under the Anti-cybersquatting Consumer Protection Act," and has attempted to obtain a temporary restraining order against the site and its operator, Zack Exley.
Here is a summary of the legal correspondence between CNN and Mr. Exley.
The Colonial Williamsburg Foundation filed an action under the
Anti-Cybersquatting Consumer Protection Act to prevent the domain name
from being transferred to Hotel and Restaurant Employees Local 25
while in the midst of a labor dispute. The defendant, alleged to be a
cybersquatter, sought to transfer the domain name to the union for one
dollar plus transfer costs. Colonial Williamsburg received a temporary
restraining order preventing the transfer of the domain from the
Federal District Court of Eastern Virginia. In its opinion the court cited the threat of irreparable harm on the part of Colonial Williamsburg if the transfer went ahead.
|In this complex case a Brazilian soccer team named Corinthians sought the transfer of the domain name from an individual who had posted passages from the Bible on the website. The respondent maintained that "Corinthians" as a word in common usage had legitimate uses other than as the name as a soccer team. The respondent also asserted that the should not be construed as having registered the domain in bad faith because they were not even aware of the soccer teams existence at the time they registered the domain. In its decision the panel ordered the domain be transferred, primarily on the basis of the respondents offer to sell the domain to the soccer team.|
A firm named Care Tech Industries sought to have one of its products,
an ozone generator, certified by the Canadian Standards Association
(CSA). When CSA failed to certify its product Care Tech registered
the domain names csa-international.net and
csa-canada.com and used the domains to publish a website
critical of CSA. CSA was successful in having the domain names
transferred to it in a UDRP/WIPO proceeding. In its decision
the WIPO UDRP panelist explicitly rejected the free speech defense.
At each website, Respondents attack and criticise the Complainant and its staff in relation, inter alia, to its failure to certify Respondents' Odatus generator. . . they are not using the domain names in connection with a bona fide offering of goods or services . . . Examination of Respondents' web pages clearly show that they are using their domain names to attract persons to their sites for the purpose of publicly attacking the Complainant and members of its staff and pleading its case in relation to a dispute between themselves and the Complainant...
|The domain name was transferred to J. Crew, which
claimed that its service mark on "crew" gave it rights to
crew.com. One WIPO panelist in the UDRP proceeding issued a stinging dissent, saying:
"Furthermore, the majority seems to assume that a trademark owner has some sort of God given right to use the trademark to the exclusion of others. As Justice Holmes observed, 'A trademark does not confer a right to prohibit the use of the word or words?. A trademark only gives the right to prohibit the use of it so far as to protect the owner's goodwill against the sale of another's product as his.' Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). In short, the Complainant does not own all rights to the generic word CREW by virtue of its trademark registration."
|A fan of the automobile Dodge Viper published a website
at this domain. DaimlerChrysler asked to have the domain name
transferred. The WIPO ruled that the fan site was not a legitimate
use of the trademarked names, explicitly considering and rejecting any
fair use considerations. Further, the panel ruled that the domain name had been registered in bad faith, this after DaimlerChrysler had twice featured the website in its publications. The individual running the fan site pursued
the case in a Virginia state court and was able to retain the
|The domain name was transferred to Hearst Magazines,
publisher of Esquire, the US men's magazine. The panel ruled to
transfer the domain partly on the basis of a lack of legitimate
interest on the part of the respondent, despite the respondent's
apparent interest in developing a vanity email service using the
domain name. Milton Mueller issued a strong dissent, saying:
"The UDRP is intended to prevent trademark owners from being extorted by cybersquatters, but it is also intended to protect legitimate registrations from being threatened by overreaching trademark owners. A correct application of the spirit and letter of the UDRP gives each of these concerns equal weight. The majority opinion fails to balance these concerns. Absent any evidence that the original registrant was trading specifically on the value of the Esquire Magazine mark, I cannot conclude that the name was registered in bad faith."
|harrypotterguide.co.uk||Warner Brothers owns the film rights to several Harry Potter children's
books. The corporation has aggressively enforced its intellectual property
rights in cyberspace, including by threatening legal action against 15-year
Claire Field -- operator of the harrypotterguide.co.uk fan site
on the grounds that the website is "likely to cause consumer confusion
or dillution of intellectual property rights." Additionally, Warner
Bros. has attempted to purchase the domain name from Field for less than
Article in the Register
|This dispute involved a critic of Jews for Jesus. Here is a story about the dispute in the New York Times.|
This is a dispute over a domain named Julia Roberts, about Julia Roberts
the movie star, but run by someone not authorized by Julia Roberts.
The owner of the domain, Russell Boyd, says he was a fan of Julia Roberts.
From the WIPO UDRP panel is this quote:
the Respondent elaborates that "If Julia Roberts had picked up a phone and said, 'Hi Russ, can we talk about the domain name juliaroberts.com?' she would own it by now." Then Respondent concludes "But as I mentioned at the beginning of this response, I still think Julia is nifty crazy wacko cool."Mr. Boyd's feelings toward Julia Roberts appear to have changed, following her efforts to take away his domain, and the web page featured such quotes as:
Ben, how does it feel knowing that so many men have penetrated "your" woman so recently? . . . Why settle for an aging crusty divorcee getabout?A WIPO panel ruled against the domain owner, but the case is now in court, with the domain owner winning the early rounds.
The respondent used the domain to publish a website critical of her
former employer, Kelson Physicians Partners, Inc., the complainant.
The single panelist set aside the respondent's argument that freedom
of speech protected her use of the trademark, and ruled the domain
name be transferred.
|The respondent published a website critical of the
KwaSizabantu religious sect. The WIPO transferred the domain names
citing "such activity amounts to tarnishing the activities associated
with the trademark or service mark 'KwaSizabantu'". The panel
rejected a defense based on freedom of speech, saying:
"The admitted nature of the use of the domain names ... includes alternative views and indeed critical views concerning ... [KwaSizabantu] and its activities. The Panel holds such activity amounts to tarnishing the activities associated with the trademark or service mark "KwaSizabantu" ... . Therefore, ... [Rost] does not establish any rights or legitimate interests ..."
|Madonna, the celebrity, is trying to take the domain madonna.com from its current owner, Dan Parisi, famous for such domains as Whitehouse.com, which is a porno site. A few articles about this dispute (as reported on madonna.com) include ZDNet's Madonna wants her name back CNET's Madonna.com embroiled in domain ownership spat WiredMaterial Girls wants her good name. and Nebraska Hospital Caught in Madonna Trademark Spat.|
|ncaa*.com|| 32 various domain names containing the string "NCAA" (a trademark
of the National College Athletic Association) were registered by Rosmary
Giancola. WIPO ruled that 20 of Giancola's domain names -- including ncaamensbasketball.com
and ncaacollegefootball.com should be transferred to the NCAA because
they were "registered and used in bad faith". WIPO found that
Giancola's remaining "NCAA" domain names (which dealt with sports gambling) such as ncaabasketballodds.com
were not confusingly similar to the Complainant's trademark.|
A New World Coffee franchisee maintaining a website critical
of New World Coffee franchising practices, defeated a motion to
issue a temporary restraining order under the
Anti-Cybersquatting Act. The judge ruled that the domain name
was not confusingly similar to the plaintiff's trademark.
From the newworldcoffeefraud.com web page:
This site is sponsored by, and in support of, people damaged by New World Coffee Manhattan Bagel's Fraud in selling franchises. We will work indefinitely, using any legal means necessary, to achieve two goals: First, to obtain restitution for New World's victims. Second, to punish agents of New World and Manhattan Bagel responsible for these actions -- whether or not they are still affiliated with the company.
The New York Times Company (NYT) want to gain control of the domain
having failed to register it when they began publishing their website
under nytimes.com in 1994.
In 1996 newyorktimes.com
was registered by New York Internet Services (NYIS), soon afterwards
NYT succeeded in having the domain registrar, Network Solutions, place
the domain "on hold", effectively censoring the website. With the
creation of ICANN's policy for resolving domain name disputes (UDRP),
NYIS regained control of the domain name pending the outcome of a UDRP
case now before WIPO's Arbitration and
Mediation Center. The current owner of the domain says it is
to be used for comment on the New York Times. The page now
comes up with pop-up ads for businesses, which the domain owner says
are something that he does for free web hosting. Right now the site
is mostly a commentary on the dispute over the domain name.
|This dispute involes Nissan Motor Co., and Nissan Computer Corp., a North Carolina-based corporation. Nissan Computer Corp. is owned by Uzi Nissan, an Israeli-American. In addition, "Nissan" means month of April in Arabic and the seventh month in the Hebrew calendar. Uzi Nissan's side of the story is here: http://www.ncchelp.org/.|
|The domain name was retained by the respondent, an
individual nicknamed "the Penguin", who used the domain to publish a
personal website. The complainant was Penguin Books, who maintained
that the individual's failure to use the domain name to offer a
product or service demonstrated that he did not have legitimate
interest in the domain.
|The animal rights group People for the Ethical
Treatment of Animals (PETA) brought a complaint under the
US Anti-Cybersquatting Consumer Protection Act against the holder of the
domain name. The defendant used the domain name to publish a parody
site "People Eating Tasty Animals". The US federal court transferred
the domain name, ruling trademark infringement and dilution.
In this important case in US District Court in Virginia, the luxury
car maker Porsche, sought to have 129 domain names containing its
trademarks "porsche" or "boxster" transferred to it, seeking relief
under the Federal Trademark Dilution Act. In seeking the transfer of
the domain names Porsche tried to assert in rem jurisdiction
and have all of domains transferred in one ruling rather than bring an
action against each domain name registrant. The court ruled that
Congress did not specifically provide for in rem jurisdiction
under the Federal Trademark Dilution Act. Further, it suggested that
even if it did there would be constitutional problems, as the due
process clause require in personam judgements when disposing of
Though the court rejected Porsche's attempt for a summary judgement against all the domain name holders, it did offer the opinion that Porsche would prevail in in personam actions, saying:
... the mere act of registration creates an immediate injury by preventing Porsche from utilizing those domain names itself in order to channel consumers to its own web site. Customers might try to contact Porsche through "PORSCHE.NET," for example, only to find that they have reached a "dead end" on the Web and then to conclude that the strength of Porsche's brand name is not as great as they first thought.
This opinion is a stronger level of protection for trademark holders with respect to domain names that ICANN's UDRP. For a UDRP panel to transfer a domain name it must be identical or confusingly similar to the trademark, not merely contain the trademark.
Porsche has begun pursuing the domain name holders individually. The domain name registrant of porschefanclub.com, a site that would not likely be confused with an official Porsche site, received a letter demanding it relinquish the domain name.
US District Court Opinion
September 7, 2000 CNN article - Porsche revs up to become master of its domain
The complainant, a large supermarket chain, sought the transfer of the
domain name from a firm seeking to sell a package of domain name and
web hosting services to the city of Pueblo. In its decision the panel
cited the respondent's conduct as a domain name speculator as the
primary reason for transferring the domain name, such actions
constituting bad faith and no legitimate interest, despite the offer
of web services.
This dispute involved the same complainant as the pueblo.net case but resulted in the domain
name being retained by the respondent, a group publishing a guide to
the city of Pueblo, Colorado. The panel rejected the request for a
transfer of the domain name, maintaining that the .org suffix
distinguished the domain name from the trademarked name.
From the UDRP opinion:
The Panelist does not understand, nor is he willing to accept, Respondent's concession that its domain name is identical to Complainant's service mark, for it is not when appropriate domain names are considered. This is because a domain name combination must include a top-level domain which can be "com.," "net.," "org.," "gov.," or "edu.," among others. . . . The top-level domain "org" customarily is in usage by non-profit or "miscellaneous" entities and not by a supermarket chain such as Complainant's.
|The Church of Scientology sought the transfer of the
domain name for a website of a splinter Scientology group. The
splinter group used the domain name to publish a website that was
critical of the Church of Scientology. In a UDRP/WIPO proceeding the
panel denied the request to transfer citing legitimate interest on the
part of the respondent. The panel held that the rights of the
respondent to criticize the Church of Scientology outweighed the right
of the complainant with respect to its trademark. The case also
involved a number of other interesting issues. For example,
the name "Scientologie" was the title of a book 1934, and the
domain owner had acquired an exclusive license to market the book.
This is a quote from the UDRP decision:
In summary, it is apparent that Respondent separated from the Church of Scientology, whose founder and leader, L. Ron Hubbard, assigned all rights to the trademark SCIENTOLOGY to Complainant. On the other hand, Respondent is holding genuine rights in the German Book entitled "Scientologie - Wissenschaft von der Beschaffenheit und Tauglichkeit des Wissens" which seems to be sharing philosophical roots with the philosophy of L. Ron Hubbard. The copyrights and other rights in this book have been licensed to Respondent by Dr. Nordenholz's heirs, and these rights appear to be even older than Complainant's trademarks. Under these circumstances it cannot be said that Respondent has no right whatsoever and no legitimate interest in the Domain Name. In the contrary, to use the Domain Name as an international platform to disseminate information about Respondent's book and its underlying philosophy appears to be a legitimate interest in itself of Respondent. Accordingly, Complainant has failed to sustain its burden of proof in this respect.
|The complainant, Technology Properties, Inc., owns the
trademark "Shack" which it licenses to RadioShack. Technology
Properties sought the transfer of the domain name from a private
individual. The respondent, nicknamed "Shack", used the domain name
to publish a website for his business, DesignShack.
The UDRP panel ruled that the domain name was to be retained,
citing legitimate interest on the part of the respondent.
Of course "shack" is a generic name, and even a US service
mark on a use of "shack" is not a exclusive right to all uses
of the name.
In this case Gordon Sumner, aka Sting, former lead singer of the music
group the Police, sought to have to domain name transferred from
Michael Urvan, a computer gamer also nicknamed Sting. The single WIPO
panelist ruled that the domain name was to be retained because "sting"
as a word in common use has other legitmate uses than to identify the singer, despite the complainants contention that :
The name STING has become synonymous in the minds of the public with the Complainant and his activities in the music industry, and serves as a symbol of the goodwill and excellent reputation associated with Sting.
|An official organization of the community of St. Moritz" asked WIPO to take away stmoritz.com from a domain owner from the United Arab Emirates. The domain name owner did not bother to contest the proceeding. A lone WIPO panel member rejected the transfer, largely on the grounds that there was no evidence that the domain was being used in bad faith, based upon his own exaimination of the web page and his investigation into the firm that owned the stmoritz.com domain.|
|In this UDRP/WIPO decision the panel ruled that the
domain name was to be transferred to a German chemical products firm
that had a trademark on "tonsil," which is apparently
it uses for products involving bleaching earths and clays.
The company claimed that the word
tonsil is "an invented word that has no meaning or significance other
than to identify and distinguish its products from those of its
competitors." Come again? Isn't a tonsil "one of the two glandular
organs situated in the throat at the sides of the fauces?" Does a
trademark in a generic name in any language trump its use as a generic
in all other languages?
|This UDRP/WIPO proceeding resulted in the transfer of
the domain name walmartcanadasucks.com (as well as a number
of other such domain names containing "walmart") to Walmart. The
panel ruled that the domain name was confusingly similar to the
complainants trademark, despite the addition of "sucks" to clearly indicate that the site is critical of Walmart.
|A small hardware store registered the domain name webergrill.com in order to promote its sales of products made by the complainant. The panel ruled that though the domain name was confusingly similar to the complainants trademark the respondent was making proper use of the trademark in its sales promotion.|
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