eNom Knuckles Under to Cuba Blacklist

New York Times Reports:

A Wave of the Watch List, and Speech Disappears

By ADAM LIPTAK

Steve Marshall is an English travel agent. He lives in Spain, and he sells trips to Europeans who want to go to sunny places, including Cuba. In October, about 80 of his Web sites stopped working, thanks to the United States government.

The sites, in English, French and Spanish, had been online since 1998. Some, like http://www.cuba-hemingway.com, were literary. Others, like http://www.cuba-havanacity.com, discussed Cuban history and culture. Still others — http://www.ciaocuba.com and http://www.bonjourcuba.com — were purely commercial sites aimed at Italian and French tourists.

“I came to work in the morning, and we had no reservations at all,” Mr. Marshall said on the phone from the Canary Islands. “We thought it was a technical problem.”

It turned out, though, that Mr. Marshall’s Web sites had been put on a Treasury Department blacklist and, as a consequence, his American domain name registrar, eNom Inc., had disabled them. Mr. Marshall said eNom told him it did so after a call from the Treasury Department; the company, based in Bellevue, Wash., says it learned that the sites were on the blacklist through a blog.

Either way, there is no dispute that eNom shut down Mr. Marshall’s sites without notifying him and has refused to release the domain names to him. In effect, Mr. Marshall said, eNom has taken his property and interfered with his business. He has slowly rebuilt his Web business over the last several months, and now many of the same sites operate with the suffix .net rather than .com, through a European registrar. His servers, he said, have been in the Bahamas all along.

Mr. Marshall said he did not understand “how Web sites owned by a British national operating via a Spanish travel agency can be affected by U.S. law.” Worse, he said, “these days not even a judge is required for the U.S. government to censor online materials.”

Rest of the article here.

Personal Names and the ACPA

I have previously blogged that 15 U.S.C. § 1125(d) and 15 U.S.C. § 1129 apply to personal names.

The Western District of Virginia and the Third Circuit appeared to agree with this theory. See Dawson v. Brandsberg, 2006 U.S. Dist. LEXIS 73512, 13-7 (W.D. Va. 2006); Shields v. Zuccarini, 254 F.3d 476, 481 (3d Cir. 2001). However, in a case that my firm handled, the Middle District of Florida rejected this theory. See Salle v. Meadows (M.D. Fla. 2007). The M.D. Fla. held that for a personal name to have protection under 1125(d), that name must also have trademark significance.

Times Online on Domaining

If you type in “debts.com” for example, you get a site filled with nothing but paid links to other sites. Presumably, this is not what someone going to that page is looking for, but it’s a nice business for the domain owner.

It seems peculiar and unjust that so much money could be made by taking advantage of people’s clumsiness in finding what they are looking for on the web. Sites that exist only to generate pay-per-click revenues from people looking for something else are parasitic by definition; they interfere with the process of finding information, and take money out of the pockets of real information providers. There’s no way to know how big a drain this is on the internet economy, but my guess is that it’s not trivial. (source)

Grounds for Re-Filing a UDRP Complaint – AEG v. Alvarez

In Alpine Entertainment Group v. Walter Alvarez, WIPO Case. D2007-1082 a three-member UDRP panel clarified one circumstance in which a previously unsuccessful UDRP complaint could be re-filed.

In the earlier case, the Complainant alleged common law rights to the term REALSPANKINGS. The Complainant also alleged Colorado State trademark rights as well as pointed out a pending trademark application, filed prior to the Respondent’s registration of the offending domain name (realspanking.com).

The panel in the earlier case gave no weight to the state trademark (despite contrary authority) and no weight to the Complainant’s common law rights.

Once the Complainant’s federal trademark perfected (over the objection of the Respondent in a letter of protest), the Complainant re-filed. As a re-filed complaint, the Panel’s first task was to determine whether it would entertain the new complaint. A commonly cited decision by Panels considering this issue is Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490, and the Panel in this case looked to Creo for guidance as well.

“First, the burden of establishing that the Refiled Complaint should be entertained under the Uniform Policy rests on the refiling complainant. Secondly, that burden is high. Thirdly, the grounds which allegedly justify entertaining the Refiled Complaint need to be clearly identified by the refiling complainant.”

The general rule is that a refiled complaint may be allowed under the Policy only in exceptional circumstances. See, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703; Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490.

In the instant case, the Panel applied Creo and found that the perfection of the Complainant’s federal trademark rights rises to this level, and was sufficient grounds to have the case re-heard.

The new evidence is the evidence that the United States trademark REALSPANKINGS has now registered. Given that the prior case failed on the first element, the new evidence of trademark registration is likely to have an important influence on the result of the case, although it may not be decisive. The registration of the REALSPANKINGS trademark is not challenged by the Respondent.

This new evidence was not in existence at the time of the earlier decision and was therefore unable to be considered by the prior panel in relation to its original finding under the threshold first element of the Policy. The Panel therefore finds that the refiled Complaint should be heard by the present Panel. D2007-1082

Upon re-hearing the complaint, the Panel ruled 3-0 in favor of the Complainant.

Related post: Merck KGaA v. Paul Rostkowski, WIPO Case No. D2007-0482 (Re-Filed UDRP Action)

Google locates its ethical compass for a moment – Domain tasting dead?

Freedom to Differ reports that Google is planning to stop monetizing all domains that are less than five days old. (source)

This should make domain tasting less profitable and should cut down on the practice. However, cybersquatters will still taste domains, track their traffic, and merely monetize domains that that receive some traffic during the tasting period.

If the do-nothing body otherwise known as ICANN really wanted to get a handle on this problem, they would simply require that domains cost $50 each with no refunds. Anyone can scrounge up $50 if they need a domain. However, not many cybersquatting domains generate more than $50 in adwords revenue.

Do-Nothing ICANN Does … something?

ICANN finally figured out that domain tasting is a pain in the ass. You can read the 57 page report here, or just take my word for it.

ICANN Ombudsman Report Issued – Someone is a bit Touchy!

I don’t know what the ICANN Ombudsman does. I still can’t really figure it out by reading the 2007 ICANN Ombudsman Report. I do find it interesting that it cites an online discussion at the UMass Law School in Amherst, MA as one of its accomplishments. UMass does not (unfortunately) have a law school.

I must credit the Ombudsman with one thing, he is not afraid to publicize the opinions of his most ardent critics!

Dear Mr. Fowlie,

Thank you very much for your email and notification that you will not take any action on a moral, ethical and legal issue of Russians depriving the free world of millions of dollars of hard currency with absolute impunity.

ICANN is a regulatory organisation entrusted with REGULATING the World Wide Web and doing this in a manner that will make it impossible for criminals to utilise the World Wide Web for their filthy purposes.

However, I and many others see that ICANN has gone mad with its lunatic attitude about the manner in which it supervises allocation of the global domain name system and today we see that Russians, a nation with no belief in any moral or ethical concerns or God is openly exploiting the web with impunity to de absolute evil.

This is absolutely ridiculous and the attitude that you have taken on the issue when you are a responsible member of this organisation is even more ridiculous.

It appears Sir that you are accustomed to taking your fat salary for doing nothing in a position which was entrusted
to you so that you could do some good.

I think that the ridiculous oprganisation which ICANN has proven itself to be requires that all its upstart and irresponsible members, including you, should receive a thorough beating till you come to your senses. I wish that I could personally thrash you so well that your soddiness could come to your senses.

However, because I cant take a stick and beat the shit out of you filthy good for nothing idiot, I intend to bring your callous attitude to the attention of the press and the US government. It is about time that this soddy private organisation was thoroughly overhauled so that it did bring morality and ethics to the WWW, something which an idiot like you neither has an inclination of doing nor the will despite your fat pay check.

Thanks for nothing assehole. (source – page 6)

I can’t say that I agree wholeheartedly with the above sentiments, but they were good for a laugh.

Hat tip to Nom de Domaine!

Google Wins Polish Cybersquatting Case

The Arbitration Court at the Polish Chamber of Information Technology and Telecommunication (PCITT) has ruled in favor of Google in a dispute over the gmail.com.pl domain name. (The PCITT is the Polish entity responsible for arbitration of .pl domain name disputes).

The respondent argued that he made no commercial use of the domain, using it solely for a single email address, and that he had rights to the name because it was merely a combination of a generic term, “mail” with the letter “G,” which he argued stood for “fat” (in Polish, “gruby” = “fat”). The PCITT didn’t buy it though.

The PCITT ordered the domain registration canceled. (Apparently .pl registration rules do not provide for the transfer of a domain name as a remedy in .pl arbitration proceedings). However, the PCITT does have the power to award attorneys’ fees and costs to the prevailing party, and the Panel in this proceeding saw fit to grant Google this remedy.

Here is what one commentator had to say about the case: (the author’s first language is Polish, so it may seem slightly grammatically off).

In our opinion this case is ground – breaking and opens door to the wider legal protection of well know brands, due to the fact that up to date arbitrators dismissed claims if complainant failed to prove that respondent offered domain for sale or infringed complainant’s trademark by acting actively on the market (eg. running on-line store with products of competitor). This view in my opinion was no longer to be acceptable due to the massive scale of cybersquatting activities. Every “domainer” knows that active use of [a] domain which is [a] well – known trademark is risky and keeping the same registration without any activity is safer than running [a] business under [the] domain. We hope that other arbitrators will follow this way of thinking, which brings law closer to the realms of the business activity. It must be pointed out that this tendency is also well established in the European law regarding .eu domains. According to the EC Regulation and the judiciary of the Court attached to the Economic Chamber in Prague if the respondent cannot show the lack of legitimate interest in domain name it is enough to transfer the domain to the Complainant. (source)

I would have to concur.

I wish that the UDRP provided remedies similar to the PCITT. The cost of losing a domain name proceeding under the UDRP is far too low (mere transfer or cancellation of the domain name). If fees and costs were hanging over both parties’ heads, less abusive domain name proceedings would be brought, and the cybersquatting industry would begin to dry up.

Hat tip to Poland – IP law news and resources blawg – an excellent resource for Anglophones who may be stymied when trying to research Polish domain name and intellectual property issues.

Personal Names and the UDRP

It really is too bad that the UDRP is not more consistently applied to personal names. The Policy was supposed to decrease the number of domain name disputes that wound up in court. Unfortunately, given the trend under the policy, I would rarely bother with a UDRP complaint for a personal name.

As far as personal names and the UDRP go, here is a representative sampling, in chronological order. There doesn’t seem to be much consistent logic to how the decisions will come out. I recommend that anyone seeking to reclaim their “good name” use 15 USC s 1129 – and not the UDRP.

Here is a representative sampling of how personal names have fared under the UDRP (in the process of re-formatting… have some patience).

1. Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (transferred juliaroberts.com) (Page, Abel, Bridgeman)
2. Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (transferred jeanettewinterson.com, jeanettewinterson.net, jeanettewinterson.org) (Perkins)
3. Monty Roberts (transferred) (Abbot)
4. Steven Rattner (transferred) (Richard)
5. Skip Kendall (denied) (Partridge, Lackert, Mueller)
6. Dan Marino (transferred) (Page)
7. Bernardo Neustadt (transferred) (Maya)
8. Bruce Springsteen (denied) (Harris, Froomkin, Page-dissenting)
9. Gloria Feldt (denied) (Donahey, Abbot, King-dissenting)
10. Jerry Falwell (denied) (Donahey, Cabell, Willoughby-dissenting)
11. Kevin Garnett v. Trap Block Technologies, NAF Claim Number: 128073 (transferred kevingarnett.com)
12. Gene Edwards (denied) (Foster)
13. Dustin Diamond (denied) (Albert)
14. Anna Nicole Smith(denied) (Gervaise Davis)
15. Joacim Bruus-Jensen v. John Adamsen, WIPO Case No. D2004-0458
16. Morgan Freeman (transferred) (Page)
17. David Pecker (denied) (Isenberg)

Web Commies?

Dear Lord, call Steve Dallas! The Bolsheviks still have a TLD!

More Schmutz on Google v. Jewtube

It seems like this is a little more of a megillah than I thought. There is more to the kemf between Google v. Jewtube than meets the eyes… it seems that I was a bissel farblondzheit!

Politician Name Cybersquatting

Marty Schwimmer reports on another Politician Domain Name Case.

Apparently, the defendant in that case owns a collection of domain names that correlate to the names of local politicians. He claims that they are for dissemination of information about the candidates, but I’m not buying it.

From the San Bernardino County Sun:

County Supervisor Dennis Hansberger has sued to stop a Muscoy man from criticizing him through a Web site using the supervisor’s name.

Hansberger, who is running for re-election, won a temporary restraining order stopping William Fanning from profiting, promoting or selling the name, said Hansberger’s attorney, Tim Prince.

A preliminary hearing is set for Sept. 26. Hansberger seeks to win the rights to the domain name.

“The public’s access to information about Mr. Hansberger is being limited by these sites,” Prince said.

Fanning, 37, owns several cyberdomains that use Hansberger’s name, such as http://www.dennishansberger.com. The Web sites contain critical remarks about the 3rd District supervisor, along with links to newspaper stories about him.

Fanning owns domain names for more than 80 politicians, including some candidates for president. Many of those sites have not been been set up, meaning Fanning owns them in name only for the time being. (source)

Normally, I am for anyone except the politician – and for unfettered political speech. However, in this case, the defendant could easily disseminate any information he wants about any politician he wants, and bask in the warm glow of the First Amendment as he does it.

But in this very limited circumstance, I don’t see there being a First Amendment right to keep that domain name. 15 USC s 1129 prohibits the registration of personal domain names with the specific intent to profit. A man should be able to own his own name on the internet. If Fanning wants to register dennishansbergersucks.com, or dennishansbergercommentary.com, or meetdennishansberger.com, or dennishansbergernews.com, I don’t have a problem with that.

I’ve previously blogged about this personal names issue under the ACPA here, here, and here.

Las Vegas Sun Reports on Domain Hustle

This is a stickup: Give me your Web site or else!

Bodog loses its domain name

Due to, well, just really REALLY stupid litigation strategy (as in not showing up at all), one of the best known online gambling websites, Bodog, no longer owns its own domain name.

Back in September 2006, 1st Technology filed a infringement suit against Bodog for unlawfully using its patented “method and system for interactively transmitting multimedia information over a network which requires a reduced bandwidth.” I have not fully reviewed the complaint or the file, so I cannot comment upon the validity of the underlying lawsuit. I am not a patent expert anyhow, so I would not feel qualified to evaluate the patent claim. Nevertheless, I am a litigator, and I can tell you that Bodog’s litigation strategy, which was … (wait, lemme review the file) … oh yeah, failing to even show up was not well advised.

The judge awarded the plaintiff nearly $49 Million in a default judgment, and then gave Bodog’s famous domain name, bodog.com to the plaintiff. The plaintiff now gets to keep or sell the domain name.

This of course begs the question, what the hell are they going to do with it? Bodog still has a valid trademark for BODOG. How can anyone else use the bodog.com domain name and not stand exposed to an ACPA suit?

Cyber-Extortion is not a Defense to a Cybersquatting Claim

A recent case (handled by my firm) out of the Middle District of Florida involved a motion for preliminary injunction over a personal domain name. The claim was brought under both 15 USC § 1129 and 15 USC § 1125(d), but the motion for preliminary injunction sought injunctive relief under 15 USC § 1129 only due to that section’s slightly lower burden of proof.

The Defendant admitted that he bought a domain name consisting of the Plaintiff’s name and then tried to sell the domain to the Plaintiff for $9,500. The Defendant argued that he believed that the Plaintiff owed him $9,500, therefore he had no “intent to profit,” since all he wanted was the money he claimed was owed to him. Thus there was no “intent to profit” from the sale of the domain name.

From the Court’s Opinion:

Plaintiff argues that this distinction is irrelevant, particularly because the debt alleged by Defendant is actually owed by [a] Corporation, not [the] Plaintiff. However, regardless of whether Plaintiff owes Defendant $9500, cyber-extortion is not a permissible way of recovering a debt. See Salle v. Meadows (M.D. Fla., Aug. 6, 2007)