A new Domain Fight™ Domain Dispute Search Engine was recently launched by USpeakWeType Technologies, LLC to solve a fundamental problem faced by both Complainant and Respondents involved in domain name and cybersquatting disputes under the Uniform Dispute Resolution Policy (UDRP). There is no way to search both WIPO and NAF panel decisions from a single search tool. Domain Fight™ solves this problem and is the only tool on the internet which searches both the WIPO and NAF domain dispute databases. Practical Applications:

I want to see if the registrant who I believe is cybersquatting my domain name has ever been named in a UDRP arbitration proceeding before? Toggle “registrant” on the search bar and enter the registrant whois data. Domain Fight™ will return results from both WIPO and NAF of each instance where the alleged cybersquatter was named as a respondent, wether the domain was transferred, the domain transfer was denied or whether the claim was dismissed.

I want to see if the person who has accused me of cybersquatting has a “reverse domain name hijacking” decision against the Domain Fight™ allows you to search by “Complainant” as well.

Other supported searches:

• Full Text
• Complainant
• Registrant
• Domain Name / URL
• Case Number

A US court has ordered a company to use ‘negative keywords’ to avoid being associated with another firm’s trade mark. The innovative order was one of a series of measures ordered by the judge.

Orion Bancorp took Orion Residential Finance (ORF) to court in Florida over ORF’s use of the word ‘Orion’ in relation to financial services and products, arguing that it had used the term since 2002 and had held a trade mark for it since then.

ORF offered some similar services to Orion, mostly related to housing finance. It was ordered by the US District Court for the Middle District of Florida from to refrain “from any and all use of the term Orion, Orion Residential Finance, or any other confusingly similar term”.

The judge in the case went further, though, restraining ORF from “purchasing or using any form of advertising including keywords or ‘adwords’ in internet advertising containing any mark incorporating Plaintiff’s Mark, or any confusingly similar mark, and shall, when purchasing internet advertising using keywords, adwords or the like, require the activation of the term ‘Orion’ as negative keywords or negative adwords in any internet advertising purchased or used”.

Keyword advertising is the display of adverts on search results pages which are triggered by the use of a certain term in the search itself.

By ‘negative adword’, the judge is referring to the fact that keyword advertising systems allow someone to instruct the system never to display their advert when a certain term is searched for, as well as to pay to have their ad displayed when a certain term is searched for. Google, which runs the market-leading AdWords system, calls them ‘Negative Keywords’. In Yahoo!’s equivalent system, advertisers can list terms as ‘Excluded Words’.

Orion Bancorp took the case over the domain name orionresidentialfinance.com, but took a general trade mark case rather than a specific domain name case to the World Intellectual Property Organisation (WIPO)’s dispute resolution service.

The ruling was a default judgment, since ORF did not submit an opposing case, though it was represented by a lawyer in the hearing itself.

The judge said that ORF “is and has been actively engaged in the business of offering to the consuming public financial and real estate related services utilizing the term ORION or various iterations thereof, including use in interstate commerce, on various signs, advertising, slogans, promotional material, a top level domain name at www.orionresidentialfinance.com and other matters containing the term “Orion”, all without Plaintiff’s authorization or consent”.

Further Information : http://www.theregister.co.uk/2008/05/05/negative_keywords_ruling/

The World Intellectual Property Organization (WIPO) announced there were an unprecedented number of cybersquatting cases in 2007. WIPO also said the evolving nature of the domain name registration system is causing growing concern for trademark owners around the world.In 2007 there were a record 2,156 complaints alleging cybersquatting filed with the WIPO’s Arbitration and Mediation Center (Center). This was an 18% increase over 2006 and a 48% increase over 2005 in the number of generic and country code Top Level Domain (gTLDs and ccTLDs) disputes.

“These increases confirm that ‘cybersquatting’ remains a significant issue for rights holders,” said Mr. Francis Gurry, WIPO Deputy Director General, who oversees WIPO’s dispute resolution work. Mr Gurry notes a number of developments in the DNS are also cause for concern from the perspective of intellectual property holders, as well as Internet users generally. Among these are the use of privacy services to shield abusive registrations and the evolving role of certain domain name registrars, together with the ongoing trademark abuse reflected in WIPO’s caseload, raise concerns about the introduction of a number of new gTLDs announced for late 2008.

“The potentially useful purposes of any new domains would be frustrated if these get filled predominantly with automated pay-per-click content,” said Mr. Gurry, adding “It comes down to a question of quantity versus quality. If the stated purpose of new gTLDs is to increase choice and competition in domain registration services, due consideration must be given to ICANN’s core UDRP principles during the policy development work and implementation plans. This is not just an issue of protecting rights of trademark holders, but also an issue of the reliability of the addressing system of the Internet in matching interested parties with authentic subjects.” Mr. Gurry said WIPO is ready to assist ICANN in its policy work in this regard.

The biotechnology and pharmaceuticals industries accounted for just over one in ten (10.04%) complaints, with banking and finance (9.53%), internet and IT (9.34%) also making up industries from where significant complaints came from.

WIPO parties settled a quarter of all cases without a panel decision. Of the remainder, 85 per cent of panel decisions ordered transfer of the domain names in question to the complainant and 15 per cent of complaints were denied, leaving the names in the possession of the registration holder.

The cases WIPO dealt with continued to reflect current trends and upcoming events. For example, hybrid car technology; the Airbus A380; social network services such as Facebook and MySpace; 2010 FIFA World Cup in South Africa and the comeback music tour of The Police were all involved in cases.

Of the 3,298 disputed domain names involving gTLDs, .com was responsible for almost three-quarters of cases (2,424 and 73.59%). .net (287 cases), .info (245) and .org (227) followed. ccTLDs made up 251 cases. Collectively the number of disputed ccTLD domain names has been increasing over the years, having moved from less than 1% in the year 2000 to over 7% in 2007.

The most frequent source of complaints lodged with WIPO with almost 45 per cent (5,741) of cases was the United States followed by France with just over ten per cent of (1,308) cases. This was followed by the UK (969 cases), Germany (718) and Switzerland 9641). For the location of the respondent, just over 40 per cent of cases (5,125) involved respondents in the United States followed by the UK with close to nine per cent (1,089). This was followed by China (640 cases), Canada (616) and Spain (582).

WIPO also expressed concern about domain tasting, noting ICANN and Google have both suggested ways of rectifying the problem. Other areas of concern were privacy of registrants and registrars. On registrant privacy, WIPO is concerned that privacy shields of registrant data should not be used to protect cybersquatting practices. Regarding registrars, there has been explosion in the number of registrars in recent years with some of these registrars appearing to engage in or collude with cybersquatting practices. WIPO is concerned that this situation can blur the distinction between the ICANN-mandated obligations of a registrar and speculative behaviour in the domain name marketplace, often at the expense of trademark holders.

The WIPO news release is available at www.wipo.int/pressroom/en/articles/2008/article_0015.html.

The Fox News Network is a ratings leader in cable news. But the channel is a loser when it comes to protecting its Fox mark.

The World Intellectual Property Organization is concluding that a Florida businessman is the rightful owner to foxbusinessnetwork.com. Still, WIPO said it was “suspicious” that the name was registered the same day the Rupert Murdoch-owned network announced February 2007 it was launching a business news channel.

The WIPO quashed allegations that the news network was engaged in “reverse name hijacking.”

The decision certifies that Worldwide Directory Services of Sebring, Florida, is the rightful owner of the disputed domain name. Derek Hodges, Worldwide’s president, goes by the nickname “British Fox.” Hodges had used the term Fox Business Network for legitimate offerings of services, including a domain name registration business and free business web page offerings, WIPO concluded.

While WIPO acknowledged that the evidence of Hodges’ use of the Fox Business Network name was “slender,” Hodges “operated an active and bona fide business that used the term ‘Fox Business Network’ in its promotion for several years before this dispute arose,” WIPO said.

Fox claimed that Hodges had tried to sell the name to the news channel for $50,000 and registered the domain name not in the furtherance of a legitimate business activity but to stir confusion with the business channel.

The WIPO called the timing of the domain name buy “hasty.” But it concluded that “The purchase might just as well be attributed to an effort to protect a name, ‘Fox Business Network’ that (Hodges) had been using before (Fox) announced its own intentions to use a similar name ‘Fox Business Channel.’”

There will be a seminar on domain name law and regulation, and launch of the book “International Domain Name Law: ICANN and the UDRP”, in Melbourne on Wednesday 20 February for our Australian readers.

Speakers at the seminar will be:

• Dr Bruce Tonkin, Elected member, ICANN board, CTO, MelbourneIT
• Chris Disspain, CEO, auDA Chair, ICANN ccNSO
• The Honourable Neil Brown QC, UDRP panelist, Member, ICSID
• David Lindsay, Senior Lecturer, Monash University Law and book author
• The Honourable Tony Staley, Chair, auDA.

The seminar will be held from 16.00–18.30 Monash University Law Chambers, 472 Bourke St Melbourne.

The seminar will seek to address the way the DNS has given rise to novel legal issues including the international arrangements for regulating the DNS and disputes involving the use of trade marks as domain names.

The speakers will share their views on the latest developments in this rapidly moving field including insights from the ICANN February 2008 meeting in New Delhi.

The seminar will provide an update on the new process for introducing gTLDs as well as review recent developments in the international system for resolving disputes between trade marks and domain names, the Uniform Domain Name Dispute Resolution Policy (UDRP).

The seminar coincides with the Australian launch of David Lindsay’s new book, International Domain Name Law: ICANN and the UDRP (Hart, Oxford, 2007).

The author of the book, David Lindsay, is a Senior Lecturer in the Faculty of Law at Monash University teaching Intellectual Property Law, Copyright, Law of the Internet, Communications Law & Regulation and Trusts.

David is the author of many articles and reports in the areas of intellectual property law, Internet law, communications law and privacy law. David is also a contributing author for Copyright and Designs Butterworths, Sydney, 1996) and the author of International Domain Name Law: ICANN and the UDRP (Hart Publishing, Oxford, 2007).

I will be bringing more information on the book in the next few days. Anyone wanting to attend the seminar should go to ecommerce.law.monash.edu.au/categories.asp?cID=5&c=175431 for online registrations, to www.law.monash.edu.au/regstudies/areg.pdf to download a pdf of the registration form or phone the university in Australia on (03) 9905 4135. Registrations close on 13 February and cost A$55 including GST.

The Wall Street Journal has a detailed look at the growing number of domain disputes over the years, from one in 1999 to 2,156 in 2007. They suggest that if there are any securitisation lawyers out there looking for work, they suggest litigating domain name disputes!As part of the article they contacted Doug Isenberg of the GigaLaw Firm who specialise in representing companies in domain-name disputes and other areas of internet law. Isenberg “attributes the ever-increasing number of disputes to the continued growth of companies doing business on the Web and the growing number of cyberscams.”

The article notes “Isenberg points out that there is a legitimate business in buying, selling and using domain names (i.e., domaining), he says that the problem is that many ‘domainers’ don’t understand or disregard intellectual-property law. This shows in the results of WIPO arbitrations: About 85% of trademark owners prevail when they bring these complaints.”

To read the article, see blogs.wsj.com/law/2008/01/11/domain-name-disputes-at-an-all-time-high/

Suzanne Tindal ZDNet Australia

Registering a domain name similar to that of another organisation and then using the URL to protest against its namesake’s products or services is acceptable, according to the World Intellectual Property Organization.

Erik Wilbers, acting director of the Arbitration and Mediation Center at the World Intellectual Property Organization (WIPO), says that companies will increasingly lose domain disputes against individuals or groups that use them as a platform for critical speech against a business.

These “freedom of speech” domain names — where a person has registered a company’s name as a domain name to voice negative opinions about that company — are controversial, because the company’s branding, and therefore intellectual property, is often used when choosing the domain name.

Disputes about ownership of domain names are handled by a WIPO service. Most cases are straightforward, with a company’s domain name being registered for financial gain — often called “cybersquatting“. In 83.72 percent of cases, the company making the case wins the decision, and the domain name is transferred over to them.

When deciding on freedom-of-speech domain names, however, Wilbers said that the panel’s decision on the cases has swung both ways. He believes that the trend will increasingly be to allow these sites to exist, pointing to a case decided last month.

The dispute was over a website, chelwest.com, operated by Frank Redmond, which expresses inflammatory opinions about a public hospital — Chelsea and Westminster Hospital in London. Redmond was not happy with the hospital’s treatment of his daughter.

The hospital claimed that the site’s name is too similar to its own site, and that “chelwest” is part of the hospital’s branding and, therefore, its intellectual property.

The hospital’s website is chelwest.nhs.uk.

The panel ruled in favour of Redmond. The reasons were: Redmond is not using the site for any commercial gain and it is immediately apparent to internet users who visit the site that it is not the official site; Redmond, according to the panel, is simply criticising the hospital with opinions which he believes to be true; and it is not obvious that “chelwest” is branding of the hospital…

Read the full article

November 30, 2007

Thomas Mennecke

The Pirate Bay, one of the largest BitTorrent trackers, obtained the IFPI.com domain in early October of this year. The IFPI.com domain originally belonged to the industry trade group, the International Federation of the Phonographic Industry. Claiming it was the donation of an anonymous donor, The Pirate Bay quickly reworked the site, creating the International Federation of Pirate Interests. And all hell broke loose.

The Pirate Bay was able to obtain IFPI.com because of a simple reason, the IFPI forgot to renew the domain. Currently, there are hundreds, if not thousands of individuals out there at this very moment monitoring the top Internet domains, waiting for an organization to slip up. An anonymous individual managed to pick up the IFPI.com domain, and from there donated it to The Pirate Bay.

Considering The Pirate Bay and the IFPI are polar opposites with regards to the online copyright debate, an attempt to settle this amicably was in all likelihood out of the question. The IFPI filed a complaint with the WIPO (World Intellectual Property Organization), requesting that the domain be returned to their ownership. It seems their complaint paid off, as The Pirate Bay has been ordered by WIPO to return the domain.

“For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.”

The authority of the WIPO is far reaching. A common reaction may suggest that since The Pirate Bay has little respect for the IFPI or copyright law in general, why bother returning the domain. However the WIPO has the authority to compel the domain registrar to hand ownership back to the IFPI. As Peter Sunde, an administrator of The Pirate Bay told Slyck.com, he currently can do little about it.
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