Equifax Loses UDRP Decision for EFX.com

August 28, 2008

Equifax uses EFX as its stock ticker symbol. On that basis, it filed a UDRP action against Future Media Architects over the domain name EFX.com. See Equifax Inc. v. Future Media Architects Inc., NAF Claim Number 1195133 (Jul. 23, 2008). Equifax was not successful, but this decision gives some guidance to parties whose “trademark” rights may be less than a traditional brand name, but are still worthy of protection.

Three-letter domain decisions are hard to win. There are often a multitude of plausible explanations as to why the Respondent registered the domain name in good faith, even if the Respondent is using the domain name in bad faith. In this case, the Complainant was unsuccessful because the panelist believed that the Respondent did not register or use the domain in bad faith. This doesn’t make the case worthy of blog space.

What is worthy of note in this case is that the panelist recognized that a complainant’s “rights” under the UDRP are not strictly limited to brand names. Under article 4(a)(i) of the UDRP, the complainant must prove that the domain name at issue is “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” The Panelist in this case interpreted that element broadly – encompassing rights that seem more like analogous use than trademark rights.

Complainant has adduced evidence that it does use the EFX mark as an indication of origin in its business. Examples include use in its credit reports, on its web site and in its annual reports. Whilst the Complainant does not have a trademark registration and this unregistered trade mark use (which is not its main name and brand Equifax) is likely to come to the attention of only those who use Complainant’s services or are aware of Complainant’s New York Stock Exchange symbol “EFX,” Respondent has shown that it does own common law rights in the EFX mark to this degree.

Accordingly, while Equifax failed to convince the panelist of the Respondent’s intention, it did convince the panelist that a company need not use a mark as a brand name in order to have UDRP-recognized rights.

UDRP Complainant is “Sorely Misguided”

August 26, 2008

In World2Work Corporation v Kurt Reuss, NAF Case No. 1214404 (Aug. 18, 2008), Panelist Darryl Wilson lived up to his rapidly-growing reputation as a no-nonsense arbitrator. The domain at issue in that case was fired.com. The complainant held a trademark registration for FIRED, but did not seem to understand that trademarks are not “word patents.”

While it is not normally required that the issue of genericness be resolved in the UDRP proceeding, especially when Complainant is the owner of a valid registration, it is important to address the issue when the mark and the domain consist of one or more common terms. Complainant’s belief that its registration gives it “an exclusive right to use the word ‘FIRED’ in commerce…” and that such use extends to a “right to use that word as a domain name and to register the domain fired.com as its own domain name” is sorely misguided. Trademark rights do not automatically confer domain name rights and vice-versa. Procurement of one right simply provides an improved opportunity for the other.

Did You Get a Notice From “Trademark Monitoring and Notification Service?”

August 20, 2008

Mike Atkins at Seattle Trademark Lawyer provides this valuable warning.

Atkins writes:

Companies like this may provide a legitimate service. But from where I sit, it only looks like they’re trying to profit from trademark owners’ inexperience.

Watch out for them. The letter looks official, but it’s really just an official waste of money.

Atkins speaks the truth. Each trademark application I have filed on behalf of my clients has quickly been followed by a form from the “Trademark Monitoring and Notification Service.” The bad news: A few have been suckered in and paid the $385. The good news, the “Trademark Monitoring and Notification Service” has immediately refunded the $385 when presented with a polite request from counsel.

It’s Ammo! It’s Seasoning! It’s Both!

August 14, 2008

If you are a vegetarian, you may want to cringe now. I think this is the best idea since Shimmer Floor Wax/Dessert Topping.

Brett W. Holm of Chaska, Minnesota got sick of finding metal pellets in the birds he shot and ate. So what did he do? He invented SPICE SHOT — ammunition comprised of spices formed into pellets. (source, TTABlog). Yep, all in one BANG, you can shoot, kill, and season a bird!

Season Shot is made of tightly packed seasoning bound by a fully biodegradable food product. The seasoning is actually injected into the bird on impact seasoning the meat from the inside out. When the bird is cooked the seasoning pellets melt into the meat spreading the flavor to the entire bird. Forget worrying about shot breaking your teeth and start wondering about which flavor shot to use! (source)

It’s ammunition! It’s seasoning! It’s both!

The TTABlog explains how and why Mr. Holm’s trademark case was a dud.

Trojans over Cocks

August 11, 2008

It has nothing to do with what you might be thinking. This is a trademark story. See TTABlog.

Dell’s “Cloud Computing” Fiasco

August 7, 2008

Despite the generic nature of the term, “Cloud Computing,” Dell filed an intent-to-use application for a trademark registration for it. Nobody seemed to notice until a flurry of internet chatter roundly criticized Dell and the USPTO (example).

Despite the fact that the USPTO initially issued a notice of allowance, the egg seems to have hit the right face and the notice of allowance has been withdrawn.

Nobody seems to have heeded the call to stop a Finnish company from registering PWNAGE.

If you are going to lie in a UDRP case – at least be smart about it! Hydentra, LP. v. Xedoc Holding SA

August 3, 2008

The recent domain name decision, Hydentra, LP. v. Xedoc Holding SA, WIPO Case No. D2008-0454 is of interest for a few reasons:

The Best Part – Cybersqatter Busted and PWNED

The Complainant alleged that the domain in question, metart.com, was owned and controlled by a man by the name of Slavik Viner. The Complaint further alleged that given Viner’s standing in the adult entertainment community, he must have known about the Complainant’s trademark and website (www.met-art.com) when he registered the domain in question, http://www.metart.com.

The Respondent claimed that Mr. Viner was not the owner of the domain name.

In support of its position, the Respondent also files a declaration in the name of Paul Raynor Keating that is said to be given “under the penalty of perjury”. Mr. Keating asserts:

(i) That he is an attorney licensed to practice by the State of California.

(ii) That he is a director of the Respondent and familiar with the ownership of the corporation and that “Mr. Viner is not listed in the records of the corporation as a shareholder”. (source at 5.22)

Perhaps Mr. Viner was “not listed in the records of the corporation as a shareholder,” but does that make the statement honest? Lets keep exploring:

The respondent then continued to deny any involvement by Mr. Viner:

“Mr Viner does not control all or any part of Xedoc. Xedoc is a duly registered Luxembourg corporation. None of its shareholders are US citizens or residents. Its directors are publically listed. They include Mr. Keating who is a director of a number of corporations”. (source at 5.26)

The Panel was provided with various emails between the Respondent and the domain broker.

Some of these are redacted but an explanation of this is given in a footnote. In particular, the Respondent states: “Some documents may have been partially redacted so as to preclude the inadvertent disclosure of highly confidential information such as bank account numbers, user names, passwords and the like.”(source at 5.17)

However, it seems that more than this “highly confidential” information was redacted.

Complainant’s Response to the Respondent’s Supplemental Submissions

5.29 The Complainant contends in this particular submission that notwithstanding the Respondent redaction of certain emails appended to its submissions, it was possible for the Complainant to see what was behind those redactions. In particular, some text was not fully obscured and when the pdf text was copied by it to a Microsoft Word file, the redactions disappeared in their entirety.

5.30 Once these redactions are removed, the Complainant contends that it is apparent that Mr. Slavik Viner was the individual who conducted the negotiations with Sedo in relation to the purchase of the domain name. (source at 5.29-5.30)

Oh SNAP! It is bad enough to be PWNED for lying to a tribunal — it is even worse when you get caught by being so utterly stupid as to not know how to properly obscure text in a PDF document! However, stupid and unethical frequently walk hand-in-hand.

5.31 As a consequence the Complainant contends that the Respondent has sought to deliberately hide Mr. Viner’s connection with the Respondent. Further, since the material discloses Mr. Viner’s email address, the Complainant has been able to discover further evidence to show that Mr. Viner frequently frequents and posts on various “adult webmaster forums” and it is “not conceivable that he would not be aware of one of the most well-known adult nude photography sites in existence”. (source at 5.31)

This is why even if you are ethically-challenged, honesty is still the best policy. You never know when a dumb maneuver will reveal your lack of honesty for all the world to see.

Although this is the most interesting part of this decision, there are other issues of interest: Read the rest of this entry »

Do I Really Need to Worry About my Trademark? Ask eBoost Consulting

August 1, 2008

I tell every business person I meet that their good name is worth more than any other asset they have and that they need to protect their brand by registering and enforcing their trademarks. Sometimes, they listen to me. Other times, I get that “ugh, another lawyer trying to tell me to spend money” reaction.

A recent dust-up over at Nobody’s Business should serve as a cautionary tale to those who hold the latter perspective. An eBoost Media customer (Rogier van Bakel) had a negative experience with that company. It turned into such a bad situation that they wound up leaving messages on the customer’s voicemail calling him a “faggot.” The story turned into a real shitstorm when it hit BoingBoing.

Then eBoost Consulting was wondering “why are we getting all this negative attention?

I can see why.

eBoost Media and eBoost Consulting are both search engine optimization companies that operate out of California. Same field, same business, very similar names, even similar addresses. Now that one company is at the center of a viral internet story about the worst customer service ever, the other company is distraught and doing damage control here and here.

Despite all the negative attention, “eBoost Consulting is guilty of nothing more than being careless about defending its trademark.” (source)

No matter how small your company may be, if it is worth anything, it needs brand protection. Don’t become the next eBoost Consulting… wait… or was that eBoost Marketing?

Bad faith registration sticks to a domain

August 1, 2008

A cybersquatter registered the domain name wwwups.org. Lots of typosquatters register the domain name corresponding to a legitimate website, but omit the period between the www and the domain name. Go ahead, pick any website that you visit on a regular basis, and take out the period. Chances are, you’ll find yourself on a pay-per-click page. (See What is a Pay-Per-Click Page? and Auto-generated websites equal bad faith under the UDRP).

The cybersquatter then transferred the domain to another party. That party tried to claim that it had registered it in good faith, thus the UDRP did not apply.

The case, United Parcel Service of America, Inc. v. Michael Robert, WIPO Case No. D2008-0339 was rather simple — given that it involved such a famous mark.

What is interesting about this case is that the panelist made it clear that bad faith registration, at least under the facts of this case, follows the domain name – even if it is transferred to a new registrant.

Under the circumstances, the bad faith underlying the original registration is properly imputed to the recipient of domain name in question. If this were not the case, unscrupulous parties could easily subvert the purpose and provisions of the Policy by transferring domain names to third persons in anticipation of a case being brought and have the third party nominally refrain from engaging in bad faith use while the case was pending thereby possibly avoiding a finding of bad faith registration and/or use. The Panel concludes that the bad faith involved in the original registration of the Domain Name should be imputed to Respondent.

The opposite, however, is not true. See, e.g., HSBC v. Clear Blue Sky; AEG v. Alvarez.

Cybersquatting in Narnia – Goliath Wins

July 29, 2008

A few weeks ago, I wrote a rather harsh assessment of Richard Saville-Smith, the registrant of narnia.mobi. He sent me a pretty spirited defense of his position and complained that I unfairly portrayed him.

Consistent with my policies, I listened to him, gave him the benefit of the doubt, and I even changed the post. By the time I was done reading this guy’s emails, I was even rooting for him. I am the sucker of the day.

That was all before I found out what a complete bullshit artist he is. After looking at the panel findings, I’m back to my original position — he’s a cybersquatter, and the Panel thought so as well (for the reasons I predicted in this post).

Here is the really interesting part of the decision — a rejection of the Sorkin/Cabell theory that there is no constructive knowledge requirement under the UDRP:

Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Media General Communications, Inc., supra. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Paragraph 2 of the Policy (“Your Representations”) is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:

“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. (emphasis added)”. (source)

Some media outlets are still trying to paint Mr. Saville-Smith as a poor victim of a big corporation. Yes, he is David in this scenario (and I rooted for the underdog). However, it seems that my initial assessment was correct: He’s just an opportunist and a bullshit artist.

New Yorkers in Red Sox Nation

July 7, 2008

This is what happens when you let a New York law firm represent the Boston Red Sox.

A Bostonian filed an Intent to Use application for the mark “RAD SEX.” (source). The Boston Red Sox filed an opposition on the grounds of likelihood of confusion, false connection, disparagement of the RED SOX mark, and (drum roll) because the mark is “immoral and scandalous.”

The applicant filed his answer, but the case is still in its infancy.

I’m rooting against the Red Sox — just this once. Not only do I hope that Red Sox Nation loses this dispute, but I’m pretty confident that they will. I can’t see how one entity could claim exclusive trademark rights in the four letters, RDSX. (Maybe if this were Hebrew or some other vowel-challenged language, but not in Tip O’Neil’s English). Perhaps if the applicant used a design with the same colors, or font, or something else that created some kind of mental association with the baseball team — or, if another baseball team wanted to be called the ROD SUX, then the Fenway favorites might have something to say. This just seems too tenuous of a connection for likelihood of confusion or false connection to attach. The 2(a) claim is frivolous, and I would like to see sanctions imposed against the idiot who thought to put that in the complaint.

Question: Of all the excellent law firms in Boston, the Red Sox had to go get some New York barneys to represent them? That’s freakin’ weak. No wonder they put a 2(a) claim in this complaint.

Hat Tip: TTABlog.

Here I come to sue your Ass!

July 1, 2008

A small firm in Maryland, Man & Machine has been manufacturing the waterproof “Mighty Mouse” for a few years. Unfortunately, they seem to be one of those businesses that said “nah, we don’t need no stinkin’ trademark lawyer” (at least not until it was a bit late). So, about a year and some change after they launched their product, Apple launched a product called (drum roll) the Mighty Mouse.

The waterproof mighty mouse? I’ve never heard of it before. The Apple mighty mouse? Yes, I’ve heard of it. In fact, I ordered one today (to go with my new Macintosh, up yours Microsoft!).

This is what is known as “reverse confusion.” It is no more “reverse” than “reverse racism” is “reverse” … but that’s the name it gets. Put simply, the concept is this: Sometimes in trademark disputes, the junior user is so big that it confuses consumers into believing that the senior user is actually the knock-off.

But you must be wondering, where is the actual Mighty Mouse in all of this?

CBS owns the rights to the Mighty Mouse trademark, and Apple duly licensed the name from CBS. However, this will now come down to whether CBS had rights that extended as far as computer gear in that famous name.

Man & Machine filed an application for a trademark registration for their use of the mark (source) in December. But, CBS had filed for the same thing in July. (source). In response, Man & Machine took on CBS and Apple.

It goes without saying that CBS has priority to the MIGHTY MOUSE mark for cartoons, kids stuff, toys, etc. Even items that CBS might not yet make that are within the “natural zone of expansion” for the mark are off limits to competitors.

An important question here will be whether that natural zone of expansion includes computer hardware, namely, mice. It is possible that Man & Machine could prevail, but the smart money is on Apple, since CBS is backing them up.

Interestingly enough, according to the Wikipedia entry on Mighty Mouse, he was originally named Super Mouse, but since there already was a Super Mouse comic book character, the creator changed the name.

News coverage on this story here.

No separation of church and state at the USPTO

June 10, 2008

An enterprising individual attempted to secure trademark registration for the term BONG HITS 4 JESUS. Naturally, the USPTO rejected the application on a few grounds. The first was that the term is “merely ornamental” — a position that I agree with.

Here is where the USPTO gets really creepy – again!

In the Morse case, the Supreme Court also said the phrase BONG HITS 4 JESUS has a “paucity of alternative meanings,” and said that the message was “no doubt offensive to some.” Morse v. Frederick 127 S. Ct. at 2624. While there is no prohibition against offensive trademarks, there is no constitutional right to obtain a trademark registration. It is the nature of the potential offensiveness of the phrase BONG HITS 4 JESUS that make it scandalous and therefore not eligible for registration.

According to the attached evidence, discussed above, the proposed mark BONG HITS 4 JESUS promotes the use of illegal drugs by attributing its use to a religious figure. This is scandalous because Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use. Accordingly, the mark BONG HITS 4 JESUS is scandalous and cannot register based on the current record.

A mark that is deemed scandalous under Section 2(a) is not eligible for registration on either the Principal or Supplemental Register. TMEP §1203.01.

See US Serial No: 77305946

While the final paragraph in this is correct, the rest of it is just crap. First of all, who says that Jesus *didn’t* smoke dope? Personally, I bet he did. Second, does the USPTO think that marijuana was illegal in Judea in 20 A.D.?

I really hope that the next administration puts an end to the hiring spree of Regent University graduates in positions of authority.

Word/Trademark of the day – “PWNAGE”

May 23, 2008

For you old folks (over 18) who aren’t up on the latest lingo, the word for the day is Pwn, and its derivatives: Pwned, Pwnage.

  1. Urban Dictionary definition .
  2. Internet for beginners explanation.
  3. The authoritative Wikipedia entry for Pwn.
  4. Wiktionary entry.

A Finnish company, Futuremark Oy Corporation, has filed for trademark registration for PWNAGE for the following goods and services:

Computer game software for communication devices; computer game software and computer game programs enabling users to play games with mobile phones and personal digital assistants; computer software and programs enabling users to communication devices to simultaneously access databases and global computer networks; software enabling transfer of data between mobile communication apparatus; computer game software; computer game programs; computer game discs; interactive multimedia computer game program; downloadable ring tones, graphics and music via global computer network and wireless devices; cases for mobile phones; computer application software for mobile phones; multimedia software recorded on CD-ROM featuring fictional characters and computer games; pre-recorded DVD’s, video tapes, laser discs featuring movies about fictional characters, and pre-recorded compact discs featuring music; motion picture films on fictional characters (source)

Lets use Pwn in context:

Example 1: These ass hats tried to trademark* PWNAGE, so hundreds of people filed oppositions. The applicant was pwned.

Example 2: OH NOES! Trademark PWNAGE!
Futuremark Oy Corp., U R PWNED

The mark was published for opposition on May 20. It sure seems funny that the USPTO relies upon wikipedia and urban dictionary to find support for idiotic “immoral and scandalous” rejections, but that they don’t seem to know that PWNAGE is so commonly used in the gamer community that no one single company should be able to restrict its use.

I really hope that someone files an opposition.

*Formally speaking “trademark” should not be used as a verb.

Trademark Zombies!!!

April 29, 2008

Jon Welch reports on a recent GM loss before the TTAB, and reports on an interesting phenomenon — a company that attempts to resurrect abandoned trademarks. See Finding Old “LASALLE” Automobile Mark Abandoned, TTAB Dismisses General Motors’ Opposition for Lack of Priority


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