First Amendment vs. Disabilities Act

(From Charles Platt) Is this a real threat, or just posturing? The ADA has already been extended far beyond the areas in which is was first designed to apply. I can certainly imagine regulations compelling web sites to be “equally accessible” to the disabled. Discussion here.

Don’t you “Krave” an interesting cybersquatting case?

By J. DeVoy

Vegas Inc., which provides excellent coverage of Las Vegas’ legal developments (such as its remarkable dedication to the Righthaven saga), reports on a lawsuit filed by the operator of Piranha Night Club and 8 1/2 Ultra Lounge against Krave over the domain name <piranhalv.com>.  Historical note: from 2004 to 2008, Krave was home to the theatrical adaptation of John Stagliano’s / Evil Angel Video’s Fashionistas.

The Complaint is available here.  It alleges a fairly common cybersquatting claim: The <piranhalv.com> domain name was registered by Krave’s operators and its agents in derogation of Piranha’s trademark rights, as it was supposedly done to mislead and confuse the consuming public.  The Complaint also alleges trademark infringement under 15 U.S.C. § 1125(a) and at common law; it goes on to seek an injunction, and a declaration that the Piranha Night Club’s operator is the proper owner of the domain name.

In the Complaint’s other causes of action, though, it invokes some claims one doesn’t always (or even often) see in trademark matters: Unfair, Deceptive and Fraudulent Business Practices under NRS 598A; Intentional Interference with Prospective Economic Advantage; Tortious Interference with Contractual Relations, and; Piercing the Corporate Veil under NRS 74.787 (since the domain name registrant is a party other than Krave’s owners/operators).

The case is Manhattan West LLC v. Century Partners Ltd. et al., 2:11-cv-01898 in the District of Nevada, and may be worth a PACER notification for those interested in trademark and domain name disputes.

Crystal Cox

This post has been updated: Here.

With .xxx imminent, people finally notice it

By J. DeVoy

At Likelihood of Confusion, guest blogger Matthew David Brozik provides an overview of the .xxx roll-out, which is happening in phases beginning now.  For those unfamiliar with the domain name, there are two types of initial availability: Sunrise A, where existing adult companies can get .xxx domains to correspond with their .com domains, and Sunrise B, where non-adult companies can permanently de-reigster their hypothetical .xxx domain names (e.g., ToysRUs.xxx), and ensure they will never exist.  After that, there will be a “landrush” period for adult companies to get new .xxx domains to develop new brands and services, and then a perpetual period of general availability so that adult companies can get new domain names on a first-come, first-serve basis; trademarks outside of adult can also be de-registered during this time.  To understand the importance of this open registration period, bear in mind that 10 years ago the acronym CFNM was meaningless, whereas now it’s a popular porn genre, and “twitter” was similarly a nearly meaningless (and antiquated) intransitive verb. Or noun. Anyway…

Some groups, such as the Free Speech Coalition, are against the .xxx sTLD.  Others are agnostic, or open-minded regarding the extension.  Informal research reveals that many companies are indeed buying the domains, optimistic that they will generate more traffic and search engine recognition, and at a minimum protect the brands they have created.  Still, others eschew it.

Some non-adult entities are embracing .xxx to make a splash for themselves.  PETA, for example, is getting a .xxx domain name.  But, this likely is more of a publicity stunt than a lasting foray into adult.  After all, this is the same PETA that had some sycophant legally change his name to KentuckyFriedCruelty.com.

Brozik’s post is informative, but I do have one bone to pick with it.  Brozik contends:

So we’re almost certainly not going to see lawsuits over the likes of pepsi.xxx, kleenex.xxx, or xerox.xxx.

Don’t be so sure.  Perhaps there won’t be disputes over those domains and peer brands, but there is an interesting question brewing as to whether paying for de-registration of a .xxx domain name is essential to keeping it from being registered.  Within the adult space, Manwin Licensing International – owner of many prominent brands and valuable domain names, including Brazzers.com and YouPorn.com – has demanded that the .xxx registry’s operators prevent “exploitation” of those domains (or those that are confusingly similar) even without paid de-registration, or turn them over to Manwin, free of charge.  Making matters more interesting, the .xxx registry has preemptively de-registered domain names that constitute famous names, for both celebrities and politicians.  This step was apparently taken free of charge.  There may not be lawsuits brought by Pepsi and Xerox against cyber-squatters, but there may be more attempts by owners of established brands to get something for nothing.

If the .xxx registry’s operators commit trademark infringement for failure to provide de-registration where no registration has yet occurred, it would be a novel theory of liability.  Can one be liable for potential infringements that have not yet occurred?  If nobody registers the domain names, there seems to be a problem of standing, (and a lack of imminent harm, if the registry’s procedures prevent the domain names from being registered).  Other countries, however, may have different standing requirements.  Also, some infringement of the trademarks has to occur (or be sufficiently imminent for standing to exist) for there to be a cause of action for infringement.  Ron Coleman’s interest in secondary trademark infringement notwithstanding, infringement has to occur for primary or secondary liability to attach – just as with copyright infringement.

Given the novelty of the .xxx space and the brands at stake, it is unlikely that this issue is dead, or that it will be for some time to come.

Are all .com and .net domains under U.S. jurisdiction?

The U.S. Immigration and Customs Enforcement Agency (ICE) takes the position that if a website is located at a .com or a .net domain, then they have sufficient ties to the USA to make them fair game for U.S. prosecutors. (source)

To understand this position, you need to understand that every domain name has a registrant, a registrar, and a registry. The registrant is the easy part — whoever registered the domain name is the registrant. Registrar is one that most people are familiar with too — this is the company you use to register your domain name. The Registry is the one that sort of flies under the radar. Every top level domain (TLD) is sponsored by a particular registry, and the .com and .net domain name registries are run by Verisign — a U.S. based company.

However, if that logic pans out — anyone who uses a .tv domain name might be well advised to hire a lawyer in Tuvalu.

Lamebook, We Support You!

by Jason Fischer

I know this story is already a couple of days old, but we think it’s still worth reporting on.  For anyone who doesn’t know what’s going on, Facebook has been on a tear recently trying to flex its trademark muscles, suing and threatening to sue pretty much anyone who uses the word “book” in their name.  Well Lamebook, a site dedicated to poking fun at the oft times unintentional hilarity that appears on Facebook, has decided that its not going to be bullied.  On November 4, after receiving threats of litigation from the social networking giant, Lamebook filed a declaratory judgement action in Texas, asserting the collective First Amendment rights of its creators and users… and for that, we thank you (and donated a few bucks to your legal fund).

Keep fighting the good fight, Lamebook, so you can continue to remind us how funny ignorance can be.

Rapidshare Cries about Intellectual Property Rights

Now this is sorta funny. Rapidshare whining about someone violating its intellectual property rights. See RapidShare AG , Christian Schmid v. N/A Maxim Tvortsov WIPO Case No. D2010-0696 (June 22, 2010). Rapidshare lost. When you lose a trademark infringement case to an unrepresented Russian who doesn’t even respond to the complaint, that’s a sign that you have shit-ass karma or shit-ass lawyers.

H/T: Defend My Domain Blog

.XXX becomes a reality

By J. DeVoy

After six years of teasing, ICANN finally delivers on a .xxx top-level domain for sites displaying adult content.

The domains, which will be available by 2011, already have 110,000 pre-registrations through ICM Registry.

Marc Randazza’s Arbitration Win Over Glenn Beck

Free Speech Wins Again.

The Decision is available here:
Glenn Beck v. Isaac Eiland Hall, WIPO Case No. D2009-1182

Other case documents available here:

Complaint
Request for Stipulation
Response and annexes.
Supplemental Filing
Surreply

I am delighted that I got this decision today, which is the birthday of my friend and mentor, Larry Walters. Larry, this win is hereby dedicated to you. Happy Birthday.

UPDATE: Respondent Isaac Eiland-Hall voluntarily gives Beck the domain, saying “point made, sir.”

Another Update: The Brown Tweed Society does a three part story on the case. In this discussion, the author really gets to the heart of the matter and provides strong analysis of the case and its pleadings. Heck, the BTS also criticizes some of my work, so it does not seem at all biased.

Part 1

Part 2

Part 3

The domain business is full of sleazes? O RLY?

I am shocked… SHOCKED to hear that in domain name auctions, “SnapNames admitted that one of its executives was shill bidding…”

The article accurately states:

Anyone who doesn’t know how dirty the domain name business is just doesn’t know the domain name business.(source)

Cybersquatter gets his Comeuppance

Ah pity da fool who thinks he be judgment proof! I got ya judgment proof right here, foo!!!!!

Cybersquatters often either hide offshore, or they claim to be offshore, or they claim that they don’t have any money — ergo they are “judgment proof.”

Well, Marc Trachtenberg, the domain law equivalent of Mr. T, just kicked a cybersquatters’s ass. The squatter decided that he would rather not pay the $120,00 judgment. Since he believed that he was outside the reach of the U.S. courts, he just ignored it. Trachtenberg loaded up the van and brought a plan together — he foreclosed on the cybersquatter’s domain name portfolio.

Judgment Debtor Luis Zavala (“Zavala”) and any and each of his agents, servants, employees, registrars, registry, and attorneys, and those persons enabling or in active concert or participation with Zavala shall transfer to Bosh his domain name holdings, including but not limited to those holdings identified in Exhibit F of the Declaration of Marc Trachtenberg in Support of the Application. This order includes the operator of the “.com” top-level domain, Verisign, Inc., which is hereby ordered to immediately disable Zavala’s domain name holdings by changing the nameserver entries to nameserver entries designated by Bosh and transfer Zavala’s domain name holdings to Bosh’s registrar of choice. (source)

This is good news. If a cybersquatter is stealing from your business, you should have some recourse to collect a judgment. Now, Mr. T can auction off the domains (at least those that don’t infringe on anyone else’s trademark), and Mr. Zavala just lost his pay per click income from 800 domain names.

Glenn Beck’s WIPO Complaint

A very interesting case that Marc is handling.

He filed this Response (don’t forget the annexes) to Glenn Beck’s Complaint (exhibits included) yesterday.

UPDATE: He has requested that Mr. Beck stipulate to the First Amendment applying to these proceedings. I will update you when Beck responds.

ANOTHER UPDATE — ROUND TWO:

Glenn Beck filed a supplemental filing.
The Arbitrator accepted it and asked for a surreply.
The surreply — (and the exhibits to it)

Marc asked that LS’s editors/writers publish no further commentary on the case until a decision is rendered. However, there is commentary and analysis here.

He has further asked that any comments to this post should be respectful to both Mr. Beck and his attorneys.

Online UDRP

I finally took a stab at filing a UDRP proceeding with the Czech Arbitration Court (my previous go-to was WIPO, and I’d never use NAF). What attracted me? Online filing! It is about time that someone recognizes that UDRP proceedings are a 21st century phenomenon, and perhaps they should be handled as such. Accordingly, imagine my joy when I found that the CAC takes its filings electronically!

Oh, but you still have to send four copies of the complaint via courier.

Well, so much for my delight.

It still seems a little easier. There is an online case management platform. I will continue to post reviews of the process.

Success is like a Girlfriend…

“Success is like a beautiful girlfriend: if you share her, she becomes a slut.” (source)

An interesting quote from an interesting guy…

Is Speculative Registration Prohibited by the UDRP?

At least one panelist thinks so. In The American Automobile Association, Inc. v. QTK Internet c/o James M. van Johns FA1261364 (Nat. Arb. Forum, July 25, 2009), dissenting panelist Houston Putnam Lowry wrote:

Respondent’s business model is to take generic words and/or letter combinations and to register them as domain names. Once someone wants to acquire the domain name, Respondent will sell it (presumably at a profit, otherwise Respondent could not stay in business). This Panel believes such practices were intended to be prohibited by the policy, even though this case is a close call.

Lowry was the odd-man-out in this decision. Nevertheless, he may have a point.