August 11, 2000
RE: WIPO - RFC-1
to: process.mail@wipo.int
WIPO Internet Domain Name Process
World Intellectual Property Organization
34 chemin des Colombettes
P.O. Box 18, 1211 Geneva 20
Switzerland
Dear Sir or Madam,
Attached are comments of the Consumer Project on Technology on
the current WIPO Request for Comment on the Terms of Reference,
Procedures and Timetable for the Second WIPO Internet Domain Name
Process. (http://wipo2.wipo.int/process2/rfc/rfc1/index.html).
Sincerely,
James Love
Director, Consumer Project on Technology
http://www.cptech.org
CPT Comments On Terms of Reference, Procedures and Timetable for
the Second WIPO Internet Domain Name Process
1. csa-canada.com and csa-international.net
http://arbiter.wipo.int/domains/decisions/html/d2000-0071.html
CSA International (a.k.a. Canadian Standards Association) v.
John O. Shannon and Care Tech Industries, Inc.
In this case, a firm named Care Tech Industries sought to obtain
certification of an ozone generator from the Canadian Standards
Association (CSA). The CSA has a trademark on CSA and CSA
International, and owns the domain CSA-International.org. Care
Tech then registered csa-canada.com and csa-international.net,
which it used to criticize CSA, for its decision not the certify
the Care Tech production.
According to the WIPO panel:
Respondents maintain websites at each of these
addresses. At each website, Respondents attack and
criticise the Complainant and its staff in relation,
inter alia, to its failure to certify Respondents'
Odatus generator. The content of each site is
substantially identical, and each directs viewers to
see "our homepage". Following that link leads to the
"odatus.com" homepage which includes promotion of the
Odatus ozone generator.
. . . they are not using the domain names in connection
with a bona fide offering of goods or services and they
do not claim to be commonly known by either of the
domain names. 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 in relation to a
product which Respondents offer under the trade mark
Odatus. Persons attracted to the site are likely to be
persons seeking contact with Complainant, not persons
seeking contact with Respondents.
Respondents claim to rights and legitimate interests is
essentially based on a claim to freedom of speech and,
expression of opinion, but that right does not require
the use of Complainant's trade marks in the domain
names for that purpose.
The WIPO panel concluded that Care Tech did not have rights or
legitimate interests in respect of the domain names, that they
were registered and were used in bad faith, and ordered the
domain names transferred to the Canadian Standards Organization.
CPT Comment:
1. This decision was wrong. The right of a person or a firm to
criticize a standards body or a government organization is a
legitimate interest. There was no suggestion that the
domains were used to confuse the public as to the identity
of the CSA.
2. The use of the trademarked name in the domain name was
appropriate, just as would be the use of the trademarked
name in the title of a book or the title of a web page. As
the decision notes, the web sites were clearly attacks on
the CSA by an aggrieved party, and would not have been
confused as an official CSA web page.
3. The fact that the interest of Care Tech was commercial did
not mean that Care Tech did not have a legitimate free
speech right to criticize the CSA.
2. DodgeViper.com
http://arbiter.wipo.int/domains/decisions/html/d2000-0222.html
This is a UDRP decision involving a web site,
http://www.dodgeviper.com, which was run by a fan of Dodge
Vipers, since 1996. Dodge had even provided a link to his site
in one of the Dodge Viper magazines. Then the Dodge legal
department went after the site. According to one observer, the
panelist "found bad faith registration and bad faith use on
literally no supportive facts.
Comment:
1. Expansion of the TLD space could help address these problems,
by creating TLDs such as .fans, .owners or .users.
2. There is a legitimate purpose in consumers creating web sites
to discuss products. They should be permitted to use the name of
the product in the domain name, so long as the web site doesn't
purport to be an official company site. The dodgevipers.com site
is clear that it is a fan site, and not a Dodge site.
3. The UDRP should reverse its decision in the dodgevipers.com
case.
3. Crew.com
http://arbiter.wipo.int/domains/decisions/html/d2000-0054.html
This is the decision that gave J. Crew the rights to crew.com.
Crew.com was registered by Telepathy, a speculator in domain
names. It was not being used for a real web page. J. Crew tried
to buy crew.com, but did not come to terms with Telepathy, and
then used the UDRP to take it away. Crew is a generic word. J.
Crew has apparently registered crew as a trademark. J. Crew
also has jcrew.com for its web page.
The MIT Dictionary Server gives quite a few definitions for Crew:
Crew Crew (kr?), n. (Zo"ol.)
The Manx shearwater.
Crew Crew (kr?), n. From older accrue accession,
reinforcement, hence, company, crew; the first syllable
being misunderstood as the indefinite article. See Accrue,
Crescent.
1. A company of people associated together; an
assemblage; a throng.
There a noble crew Of lords and ladies stood on
every side. --Spenser.
Faithful to whom? to thy rebellious crew?
--Milton.
2. The company of seamen who man a ship, vessel, or at;
the company belonging to a vessel or a boat.
Note: The word crew, in law, is ordinarily used as
equivalent to ship's company, including master and
other officers. When the master and other officers
are excluded, the context always shows it.
--Story. Burrill.
3. In an extended sense, any small body of men
associated for a purpose; a gang; as (Naut.), the
carpenter's crew; the boatswain's crew.
Syn: Company; band; gang; horde; mob; herd;
throng; party.
Crew Crew (kr?), imp. of Crow.
Crow Crow (kr?), v. i. imp. Crew (kr?) or Crowed (kr?d); p.
p. Crowed (Crown (kr?n), Obs.); p. pr. & vb. n. Crowing. AS.
cr?wan; akin to D. kraijen, G. kr?hen, cf. Lith. groti to
croak. root24. Cf. Crake.
1. To make the shrill sound characteristic of a cock,
either in joy, gayety, or defiance. ``The cock had
crown.'' --Bayron.
The morning cock crew loud. --Shak.
2. To shout in exultation or defiance; to brag.
3. To utter a sound expressive of joy or pleasure.
The sweetest little maid, That ever crowed for
kisses. --Tennyson.
To crow over, to exult over a vanquished
antagonist.
Sennacherib crowing over poor Jerusalem. --Bp.
Hall.
CPT agrees with the dissent by panel member G. Gervaise Davis
III:
We are not legislators, but arbitrators. The majority,
in an effort to stop a practice that it seems to take
upon itself to believe is an unstated purpose of the
ICANN Policy, has completely over-stepped its mandate
as arbitrators. The decision creates a new and
unauthorized test out of whole cloth, based on
assumptions of fact by arbitrators without evidence on
the subject, instead of using the appropriate and
carefully crafted three step test for required evidence
set out by the ICANN Policy and Rules. In my judgment,
the majority's decision prohibits conduct which was not
intended to be regulated by the ICANN policy. This
creates a dangerous and unauthorized situation whereby
the registration and use of common generic words as
domains can be prevented by trademark owners wishing to
own their generic trademarks in gross. I cannot and
will not agree to any such decision, which is
fundamentally wrong. I respectfully dissent from the
majority decision of my fellow professional panelists.
CPT Comment:
1. The UDRP should not have given J. Crew the rights to
crew.com. Crew is a generic word. J. Crew had registered
jcrew.com, a domain name that was clearly different from
crew.com. It is anticompetitive for the UDRP to take away
domains based upon generic words to a company that has a
different name.
4. Penguin.Org
http://arbiter.wipo.int/domains/decisions/html/d2000-0204.html
CPT agreed with this 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 name was registered.
ii. Mr Katz has made only two uses of the said domain name
, 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 to
establish a www site dedicated to penguins (the birds).
[snip]
xii. Mr Katz is not a cybersquatter: he is known as
"Penguin"; he did not register the other domain names
(registered August 24, 1998);
(registered October 5, 1998) and
(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
registered in the name of families. It is not wrongful
conduct so to do.
xix. When registering a domain name, there is no obligation
to disclose 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
become 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
underlie 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 permitted 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.
CPT Comment:
1. WIPO was correct in permitting Anthony Katz to retain the
use of Penguin.org.
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 clubs.
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 Penguin birds, 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. CPT is concerned about cases where the
respondent is not able to obtain effective representation.
5. Esquire.Com
http://www.arbforum.com/domains/decisions/93763.htm
This is an arbitration decision that took away the domain
esquire.com, and gave it to Hearst Magazines, the publisher of
Esquire, the US mens magazine. There was apparently evidence
that the original domain name holder, Mail.com, had plans to use
this as a vanity email address. This is from the dissent in the
opinion, written by Milton Mueller:
"There is growing precedent within US law and within
the UDRP that resale of domain names per se is not
evidence of actionable bad faith. (See Avery Dennison
Corp. v. Jerry Sumpton, D.C. Case No. CV-97-00407-JSL,
Appeal No. 98-55810; General Machine Products Co., Inc
v. Prime Domains NAF 0001000092531 re: craftwork.com,
and Allocation Network GbmH v Steve Gregory, WIPO Case
D2000-0016 re: allocation.com.)
"Which leads to the issue of Mail.com's status in this
proceeding. Respondents offered proof that Spencer sold
the domain name to a party with a legitimate,
non-infringing interest in the name. Mail.com provided
evidence from 1997 - three years before this dispute -
of plans to use the domain name as a vanity email
address. Complainant Hearst offered no evidence or
argumentation to challenge the intent or validity of
this transaction. The Avery Dennison v. Sumpton
precedent is directly applicable to this case, as the
ruling specifically upholds the right of a domain name
registrant to resell use of a domain name as a vanity
address even when the character string of the second
level domain name corresponds to someone's trademark.
"I emphatically dissent from the majority opinion's
statement that Mail.com's rights "are subject to
whatever defects Spencer's claim may face." I find
their contention that a subsequent permissible use
cannot be considered as an important factor in this
case to be insupportable. The majority panelists have
decided - without any direct evidence - that Spencer's
sole original intent was to sell the name to Esquire
Magazine. When faced with the clear fact that Spencer
sold the name to someone else, they say that this sale
is invalid because of Spencer's imputed original
intent. The argument is entirely circular, and has no
validity.
"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.
CPT Comment:
1. The Esquire.com decision should not have overlooked evidence
of proposed legitimate uses of the Esquire.com domain name.
In this, case, as a domain for personal email addresses.
The registration of a trademark for the word Esquire in
connection with the magazine does not prevent others from
using the word Esquire for other legitimate uses, including,
for example, as a personal email address.
2. If ICANN would expand the TLD space, to include such TLDs as
magazine or even .esquire, it would not be necessary to
choose between the use of Esquire as a personsal email
domain and the name for the magazine publisher.
6. Walmartcanadasucks.com
http://arbiter.wipo.int/domains/decisions/html/d2000-0477.html
This is a decision that gave "walmartcanadasucks.com",
"wal-martcanadasucks.com", "walmartuksucks.com",
"walmartpuertorico.com" and "walmartpuertoricosucks.com" to
Walmart. The decision said:
Based on its finding that the Respondents, Walsucks and
Walmarket Puerto Rico, have engaged in abusive
registration of the domain names
"wal-martcanadasucks.com", "wal-martcanadasucks.com",
"walmartuksucks.com", "walmartpuertorico.com" and
"walmartpuertoricosucks.com" within the meaning of
paragraph 4(a) of the Policy, the Panel orders that the
domain names "wal-martcanadasucks.com",
"wal-martcanadasucks.com", "walmartuksucks.com",
"walmartpuertorico.com" and
"walmartpuertoricosucks.com" be transferred to the
Complainant, Wal-Mart Stores, Inc.
Background:
These domains were owned by Kenneth J. Harvey, a speculator in
domain names.
Acccording to the decision:
The "walmartcanadasucks.com" and "walmartuksucks.com" web
pages each state that "This is a freedom of information site set
up for dissatisfied Walmart Canada [or UK, respectively]
customers." Each site invites visitors to "Spill Your Guts" with
a "horror story relating to your dealings with Wal-Mart Canada
[or UK, respectively]". On the "walmartcanadasucks.com" website,
Respondent has posted "Wal-Mart Horror Story #1" which recounts
his version of events in respect to the "walmartcanada.com"
domain name. Each website posts a photograph of Respondent,
labeled "President", and Respondent's biography. Each "Spill
Your Guts" page indicates "If we feel your story is interesting,
it might be included in award-winning author Kenneth J. Harvey's
forthcoming book - "Wal-MartCanadaSucks.com" [or, on UK page,
"about Walmart"]".
Walmark indicated these domains were registered in bad faith, and
indicated:
Respondents' free speech argument is a convenient and
transparent dodge. It does not even make sense with
respect to three of the domain names:
WAL-MARTCANADASUCKS.COM, WALMARTPUERTORICOSUCKS.COM,
and WALMARTPUERTORICO.COM. There are no websites
attached to these domain names. Respondents offer no
evidence to support a claim that they have made
legitimate use of any of these three domain names.
The arbitrator indicated:
Respondent has appended the term "-sucks" to domain
names that are, in the absence of that term,
confusingly similar to Complainant's mark. The addition
of the pejorative verb "sucks" is tantamount to
creating the phrase "Wal-Mart Canada sucks" (and
comparable phrases with Respondent's other "-sucks"
formative domain names). The elimination of the spacing
between the terms of the phrase is dictated by
technical factors, and by the common practice of domain
name registrants. The addition of a common or generic
term following a trademark does not create a new or
different mark in which Respondent has rights.
The decision noted that:
Respondent argues that addition of the word "sucks" to
the base names "walmartcanada", "wal-martcanada",
"walmartuk" and "walmartpuertorico" causes such names
to lose their confusing similarity with Complainant's
"Wal-Mart" trademark. Respondent contends that because
an Internet user or consumer viewing a "-sucks"
formative domain name would assume that Complainant is
not the sponsor of or associated with a website
identified by such address, Respondent's "-sucks"
formative marks cannot be confusingly similar to
Complainant's mark.
In support of this argument, Respondent refers to
Lucent Technologies, Inc., v. Lucentsucks.com, 95 F.
Supp. 2d 528 (E.D.Vir. 2000). It is first important to
note that the observations made by Judge Brinkema in
the Lucentsucks.com opinion regarding the issue of
confusing similarity are in the nature of dicta, since
the court dismissed the action against defendant for
lack of jurisdiction 10. Judge Brinkema's opinion in
Lucentsucks.com, and one decision on which she relies,
Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D.
Cal. 1998), each lend some support to Respondent's
position. However, both cases are distinguishable.
This defense was rejected, however, and the WIPO panel found on
behalf of Walmart, that various "sucks" domains were "confusingly
similiar" to the Walmart trademarks.
In Bally, the court granted summary judgment in favor
of a defendant that used the "Bally" trademark on a web
page, appending the word "sucks", to create a
"ballysucks" web page. In that case, "ballysucks.com"
was not registered and was not used as a second-level
domain name. The principal issue was whether the
defendant could lawfully express itself on its web page
using the trademark "Bally" in combination with the
word "sucks". The court held that since the
"ballysucks" web page was devoted to critical
commentary regarding Bally, and the defendant did not
have a commercial purpose in maintaining the site, the
defendant had a valid free speech interest in using
Bally's mark.
The court observed that even a "ballysucks.com" domain
name might not constitute trademark infringement ("even
if Faber did use the mark as part of a larger domain
name, such as "ballysucks.com", this would not
necessarily be a violation as a matter of law." 29 F.
Supp., at 1165). It made this observation in the
context of applying the Sleekcraft factors. In Bally,
the court found the defendant's intent in establishing
its "ballysucks" web page was to criticize the
trademark holder, and this factor weighed heavily in
favor of the defendant. In the present proceeding,
Respondent's intent is different.
In Lucentsucks.com, the court observed that "Defendant
argues persuasively that the average consumer would not
confuse lucentsucks.com with a web site sponsored by
plaintiff" 11 . However, the court did not undertake
any particularized analysis of the disputed domain name
as compared with the plaintiff's trademark. Moreover,
the court observed that: "A successful showing that
lucentsucks.com is effective parody and/ or a cite
[sic] for critical commentary would seriously undermine
the requisite elements for the causes of action at
issue in this case." 12 No such showing had been made
by the defendant in Lucentsucks.com. The court was
speaking in the abstract - and in dicta -- about a
future case in which the trademark issues would be
fully litigated. Even so, the court indicated that the
defendant's intent in registering and using the
disputed domain name would be an important element in
determining whether cybersquatting had occurred. The
Panel does not consider Lucentsucks.com to stand for
the proposition that "-sucks" formative domain names
are immune as a matter of law from scrutiny as being
confusingly similar to trademarks to which they are
appended. Each case must be considered on its merits.
The Panel is not making any determination regarding the
registrants and users of other "-sucks" formative
domain names (such as "walmartsucks.com"). The record
of this proceeding evidences that Respondent did not
register "walmartcanadasucks.com" and his other
"-sucks" names in order to express opinions or to seek
the expression of opinion of others. The record
indicates that his intention was to extract money from
Complainant. An application of the Sleekcraft factors
in another context involving Complainant's mark and the
word "sucks" might produce a different result than that
reached here. The Panel notes that use of a domain name
confusingly similar to a mark may be justified by fair
use or legitimate noncommercial use considerations, and
that this may in other cases permit the use of "-sucks"
formative names in free expression forums.
Complainant has met the burden of proving that
Respondent is the registrant of domain names that are
identical or confusingly similar to a trademark in
which Complainant has rights, and it has thus
established the first of the three elements necessary
to a finding that Respondent has engaged in abusive
domain name registration.
CPT Comment:
1. Domain names with a trademark plus the term "sucks" are not
confusingly similar to trademark. The term "sucks" is
clearly a pejorative term, used for criticism and free
speech. ICANN should not be in the business of preventing
people from creating various "sucks" web pages.
7. Catmachines.com
http://arbiter.wipo.int/domains/decisions/html/d2000-0275.html
Roam the Planet had registered catmachines.com. Caterpillar was
successful in taking catmachines.com away from Roam the Planet.
According to the WIPO decision, Caterpillar had sales of $19
billion in 1999. (Bulldozers and other products). Caterpillar
already had registered caterpillar.com and cat.com. It claimed
that "catmachines" was "identical, or confusingly similar" to
its trademark in caterpillar or cat.
Roam the Planet, apparently a seller of domain names, complained
that Caterpillar was engaged in "Reverse domain highjacking."
Roam the Planet identified.
"numerous legitimate domain uses" for a domain
combining "cat" with "machines", such as CAT for
Computer Aided Technologies, Cat (the animal)
associated with machines (e.g. Littermaid), Category 5,
CATscan, Center for Advanced Technology (CAT), Computed
Axial Tomography (C.A.T.), Covert Action Teams (C.A.T.)
and Catalog (abbreviation).
Apparently undermining its case was the fact that Roam the Planet
had tried to sell catmachines.com to Caterpillar for $9,000.
WIPO transfered catmachines.com to Caterpillar. Interestingly,
WIPO did not note that the domain catmachine.com is in use now,
by a firm that designs web pages.
CPT Comment:
1. Catmachines.com is not "identical or confusingly similar" to
caterpillar. The owner the domain name did demonstrate
that there were legitimate uses for the domain other than
the one proposed by Caterpillar.
2. Ironically, the WIPO decision to give Caterpillar the domain
catmachines.com creates a possible dispute involving the
domain catmachine.com, which is clearly a bona fide use by
someone other than Caterpillar.
8. Eurotrash.com
http://www.eurotrash.com/Aboutus/News/domainDispute.html
According to this URL, the current user of Eurotrash.com claims
to have incurred expenses of more than $40 thousand to defend its
domain names.
CPT Comment:
1. This raises some questions about the costs imposed on domain
name holders.
2. Eurotrash is a common slang term. I don't see how anyone
could claim a "right" to use this in the .com space.
9. Scientologie.org
http://arbiter.wipo.int/domains/decisions/html/d2000-0410.html
Religious Technology Center v. Freie Zone E. V
This is an interesting and complex dispute involving on the one
hand, a group that owned the copyright to a book named
Scientologie, and a religious organization that claimed a
trademark on the word scientologie. The current domain name
holder uses the domain to criticize the Church of Scientology,
the owner of the trademark for Scientologie. WIPO rejected the
request for a transfer, noting that the domain name holder's
interest in criticizing the Church of Scientology was a
legitimate use.
CPT Comment:
1. The decision in the scientologie.org case was correct, and a
good illustration of the need to protect the public's right
to free speech and criticism.
10. bridgestone-firestone.net
http://arbiter.wipo.int/domains/decisions/html/d2000-0190.html
Bridgestone Firestone, Inc., Bridgestone/Firestone Research,
Inc., and Bridgestone Corporation v. Jack Myers
This is an important decision where WIPO upheld the right of a
person to use bridgestone-firestone.net to criticize Bridgestone
Firestone, which owned the domain bridgestone-firestone.com.
The panel decision said:
The question presented in this case is whether fair use
and free speech are defenses to a claim for transfer of
a domain name under the Policy. Under Paragraph 4
(c)(iii) of the Policy, noncommercial fair use is
expressly made a defense, as noted above. Although free
speech is not listed as one of the Policy's examples of
a right or legitimate interest in a domain name, the
list is not exclusive, and the Panel concludes that the
exercise of free speech for criticism and commentary
also demonstrates a right or legitimate interest in the
domain name under Paragraph 4 (c)(iii). The Internet is
above all a framework for global communication, and the
right to free speech should be one of the foundations
of Internet law.
. . .
For all of the foregoing reasons, the Panel decides
that although the Domain Name registered by Respondent
is identical or confusingly similar to the trademarks
in which the Complainants have rights, the Respondent
has legitimate fair use and free speech rights and
interests in respect of the Domain Name, and the
Respondent has not registered and used the Domain Name
in bad faith. The Panel therefore denies the claim of
the Complainants for transfer of the Domain Name.
CPT Comment:
1. The panel decision was correct in affirming that criticism
of a firm is a legitimate basis for using the company name
in a domain name.
11. Evidence of Non-Confusion between .com, .net and .org
domains.
There are many WIPO UDRP decisions that take away .org, or .net
sites because they are considered confusingly similar to existing
.com sites. There are also .com sites taken away because they
are considered similar to .org site. The following examples
illustrate the these decisions are not necessary, and that the
same name can be used by different organizations using different
TLDs.
abc.com ABC Television
abc.org American Builders and Contractors
nbc.com NBC Television
nbc.org Northport Baptist Church
Yale.com -- Yale Industrial Trucks
Yale.edu - Yale University
blue.com Blue Hypermedia
Blue.org Blue Dot
Blue.net Bluegrass Cellular Internet Services
watch.com National Watch Exchange
watch.org Koenig's International News: WorldWatchDaily
watch.net i2x Media
Internet.com The Internet Industry Portal
Internet.net Internet Shopping Network
fish.com A personal web page
fish.org Discussion of fisheries management
car.org California Association of Realtor
car.net Car.Net An automobile portal
cpa.com Ralphael & Associates, accountants
cpt.net Dietrich and Wilson, accountants
mpaa.net Michigan Patent Accounting Association
mpaa.org Motion Picture Association of America
WTO.com Wolf Technologies Online
wto.int World Trade Organization
baseball.com Baseball.com baseball portal
baseball.net Baseball shopping network
baseball.org Tribute to Erich Maria Remarque
att.com AT&T Global Network Services
att.net AT&T Worldnet Service
att.org Associated Talmud Torahs