Last day to apply for .xxx Sunrise registrations
Today is the (extended) last day to apply for .xxx Sunrise registrations, to prevent other parties from later registering a domain name with your trademark in it. More information here. I don’t think it’s been definitively decided whether the UDRP will apply to .xxx domains or whether the URS (“rapid suspension”) system will be in place; but that’s a minor detail when you can go ahead and protect your brand right now. (Also, if anyone has any definitive answers on that, let me know and I’ll update here.)
Update: UDRP does apply and URS doesn’t. Thanks to Kevin Murphy (@DomainIncite) for reminding me!
Computers (hardware and software) as a law practice tool
I got into a discussion today on Twitter with @nikiblack and @VBalasubramani about the relative merits of using a Mac computer for your law practice, and I decided this would be a better format to lay out my position. So, in the interest of full disclosure, let me say up front that I am pro-Linux, pro-cheap PC hardware. That doesn’t make me necessarily anti-Apple hardware or anti-Mac software, far from it. But here’s what I think any solo or small firm lawyer should be asking themselves.
The primary question is, What do you use a computer for? A computer is, after all, just a tool for your law practice. As a carpenter uses hammer and nails and saw and lumber, so does a lawyer use computer hardware and software to do a job: practice law on behalf of the client. There’s nothing magical about it, it’s a very basic relationship.
So, what exactly do lawyers use their computers to do? I think it really boils down to just a couple of things, and very simple things at that: e-mail, data management, browsing/research, and word processing. Since words are a lawyer’s stock and trade, the last one (word processing) is obviously the most important. To the extent that you use GoogleDocs for stuff, you might even collapse these tasks into a single “browser” category. In any case, I don’t really see anything else beyond that, except maybe PowerPoint-style presentations for litigators (though, God save us all from PowerPoint, please).
So now that we’ve narrowed down what a lawyer uses a computer for, the next questions is, how to accomplish these tasks in the most efficient way. Here’s where the Mac-enthusiasts — like this guy at Lawyerist — crow the loudest. Macs “just work,” they say, they’re virus-resistant they say, they look nice they say, and that means I can spend more time lawyering, or marketing, or whatever. That may be; I don’t dispute that (the point about virus resistance is debatable, especially as Macs become more popular). What I dispute is that this makes them worth the high premium in price. I think it does not. I made the analogy to @nikiblack that I wouldn’t buy a chrome hammer unless it did its job somehow better. A bargain-price hammer might break after a few uses, too, so there’s that to consider.
What you want, I think is reliable, easy to use hardware, and reliable, easy to use software. Note that these are two entirely separate considerations. In the case of a Mac computer, you don’t get to make that distinction or decision, it’s been made for you, and on modern Macs, you’re even using Intel/PC hardware. Some of the major PC manufacturers also operate this way (although you can get Dell hardware with no operating system (“OS”), or sometimes various Linux distributions installed). Where there is less choice, there is always a higher price. That’s a simple economic law: competition’s effect on prices.
For the most part, modern hardware is pretty reliable; even stuff that’s several years old probably has a lot of life left in it, and given the right OS and applications it’s still totally usable (as noted in the comments to that Lawyerist article). So, I think the real issue then is software.
But do not despair, O lawyers, for ye have alternatives! You can, for example, install a Mac OS onto cheaper PC hardware, a tactic that’s known as creating a “Hackintosh.” Or you could use a virtual machine (“VM”) application to run a MacOS instance on your Windows PC.
And you can do what I did, which is forsake the legacy OS / software market in favor of open source, and free, Linux.
Okay okay, deep breaths, people! I know what you’re thinking. (That I’m crazy.) That may be. But hear me out. It’s not as scary as you think, leaving behind the expensive stuff.
A caveat: Linux does have a bit of a learning curve. I think if you took at least one programming language in college (you’re probably required to do so) and are comfortable with your smartphone and following online guides written by the opensource community, you’ve got all the tools you need, and the learning curve is more or less done with. In fact, MacOS is, from what I understand, built off of BSD, a Unix/Linux flavor. Many of the things that you can do from the command line in Linux you can also do from the command line on your (ridiculously overpriced) Mac. If you like paying through the nose for that privilege, that’s your business. All I’m saying is, understand your options!
So what do I use? I’ve got an older HP laptop, it was about $450 in 2009, I think. Maybe 2008, I forget. I use Ubuntu, which is a good and easy to use Linux distribution, but there are tons out there. I think Ubuntu’s probably the best to use if you’re a newbie, though, as the install process is quite a bit easier. As an added bonus, you can usually install Linux right on top of your Windows machine — it will happily coexist with other OSs, two or five or twenty, a process that’s called “dual boot” or “multiple boot.”
For the lawyer tasks that we discussed above, I use: Firefox (browsing), Thunderbird (e-mail), and LibreOffice (f/k/a OpenOffice) for word processing. Firefox is in wide use even among Windows adherents, and most browsers (excepting Internet Explorer, which is garbage) are pretty much the same in terms of usability and security. Ditto Thunderbird, though you have to add the Lightning extension for calendaring; it’s not as “nice looking” in my opinion as Outlook, but Outlook is a virus, basically, and I prefer to deal with Thunderbird. In any case, use Google for calendaring and your phone for e-mail and it’s not even a problem. There’s certainly other free options (Ubuntu installs with Firefox but includes a different e-mail client, Evolution, which I’ve never liked for some reason).
LibreOffice is the only one that gave me a bit of trouble. I found that I had to unlearn what I knew about styles in MS Word to really understand how LibreOffice’s styles work. It’s much more like a computer programming language, with the concept of inheriting and, particularly, “following.” I was about ready to pay for a Linux word processing program one day until someone sent me a link to a help document for the writer, which helped me get over the hump. It now works great. And if you’re really ambitious, LaTeX (“la-tech’,” not “lay’-tex”) can do some absolutely crazy things with typesetting, but it’s definitely intricate and arcane. (FWIW, I think the LibreOffice PowerPoint program is not particularly well supported, so you may hate it if you do a lot of those things. I don’t know why you would, though. PowerPoint sucks the life out of presentations. Don’t use it, I beg you.)
Add to the plus column this feature: LibreOffice can handle MS Word .docs just fine. (It might even do Mac Pages documents, I’m not sure, I’ve never checked.) But everything I do is .PDF, because it embeds the fonts. (On that subject, see @typogforlawyers, buy his book, read it, love it.)
So, for example, I took a bunch of scanned images from my client, and through a simple command line tool I converted those .jpeg images to .PDFs, then I used another command line tool to tack all those .PDFs together — in the order I wanted! This took me about 15 minutes, and cost me $0.
How much is Adobe Acrobat (full) again? QED, mkay.
And stability? Forget about it. Linux is just as stable as MacOS.
The last lawyer task is data management, in other words, folder organization and the like (maybe databases for client info). Ubuntu uses a window manager called Gnome, and there are several different ones available for individual Linux distributions (Gnome looks a lot like MacOS, I think, while KDE looks more like Windows), but in any case, it’s easy to graphically manipulate folders and files and whatnot. Linux really shines, however, at command line manipulation of files; it’s quite powerful, and takes very little time once you get comfortable with it, if you need to move things around or you want to zip (tar/gzip) things up into packages for storage. For the most part, though, I think solos are migrating “to the cloud” to services that handle practice management through a browser, and that’s probably where I’m headed sooner or later, when I get tired of doing it by hand. But again, that’s hardware (and software) independent.
Linux will also handle networking in a much more sophisticated fashion than is usually necessary for most users, but it might be helpful to lawyers to be able to shell into their machine at home from their phone or another machine at work, or whatever. I only bring this up because there’s a lot of control available to the user to lock down the system and prevent external access. Lots of Windows programs are just huge gaping security risks, which is why virus creators target those machines. Linux makes it much more difficult to do things like that by default. If you’re interested in this sort of thing, let me know and I can put together another piece on that point specifically.
In summary, lawyers use computers in very basic ways for very basic functions. There is no reason to have a Ferrari to drive down the street to get groceries or drop your kid off every day at school. Now, if you just are in love with the look of that Ferrari, that’s fine. But I want you to be honest about your reasons! It is very possible, too, that you can get more functionality for your dollar using something different.
One final note. I use an Android phone, a Motorola Atrix, which plugs into my laptop very nicely and lets me drag and drop files (music, etc) quite easily. The problem with iPhones is that iTunes assumes you don’t know what you’re doing and controls everything for you. I like the iPhone interface, I think it’s a bit more polished, but the control over an android device wins out for me. I think people are even installing Ubuntu onto their phones now… 
Burden of proof under the UDRP
It is always the Complainant’s burden to prove out its case under the UDRP that the Respondent (1) registered a domain name that is identical or confusingly similar to the Complainant’s rights in a mark, (2) that the Respondent has no rights or legitimate interests in the domain name at issue, and (3) that the Respondent registered and is using the domain name in bad faith. What that means is that you cannot simply fill in a few blanks of the templates that the various UDRP arbitration providers have posted on their websites for your use, and expect to receive a good result, even where the Respondent doesn’t respond.
Take this recent NAF case for example. I’m not sure if Maribel Silva is a lawyer in Illinois or what (couldn’t figure out if the State Bar there had a search function like we have in Georgia; she didn’t show up in the disciplinary records but the wording on that search made it sound like no such lawyer was admitted there in Illinois, so that was strange), but you can’t win a UDRP by submitting no facts to back up your argument, even where “Mike Man” in China doesn’t respond, and the cybersquatting seems blatantly obvious.
Complainant has submitted its Complaint with no Annexes to show Respondent’s alleged use, and has simply restated the Policy paragraphs while failing to make substantive arguments for its position. The Panel notes that it has been found in previous cases that, even where there is no Response from Respondent, that Complainant must still allege and prove the elements of the Policy. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent’s default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”); see also Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name). The Panel finds that Complainant has failed to meet its burden in this regard. (emphasis added)
This is probably a typical misconception about cybersquatting and the UDRP. Complainants often think that just because they have a registered trademark that they have a “slam dunk” case. I can’t stress enough that this just isn’t so. You’ve got to argue your case, and you do that by showing proof to support those arguments. Just make a naked allegation without any support for it isn’t going to work, unless you just happen to get a poor Panel (which, I must add, seems less and less likely these days versus the early days of the UDRP, when the jurisprudence was still being developed). In any event, you’re paying a lot of money in filing fees, why gamble with it? You want to win, don’t you? Then trust me: you have to collect and show as much evidence as you can (within reason).
Of course, no disrespect is meant to Maribel Silva. It’s possible she submitted Annexes and evidence and somehow they never made it to the Panel (the famous “the Internet ate my attachment” excuse?), I don’t know. But certainly the Panel wasn’t persuaded by the Complaint, and that means that it could have been prepared differently.
Description, common words, and monopoly
Here’s a point to keep in mind, particularly when defending against a UDRP filing.
[K]nowingly registering as a domain name an identical name to that used by a competitor for substantially identical services is not necessarily an abuse apt to be dealt with under the Policy, even if resultant confusion of Internet users is inevitable. . . . If the name in issue is merely a description common to a particular trade and is being used by the Respondent in relation to that trade, the registration and use of the Domain Name may well fall outside the scope of the Policy. Were it otherwise, domain name registrants could effectively monopolise descriptive terms. The owner of <fish.com>, for example, could monopolise “fish” in all domains even against sellers of fish. (emphasis added)
Tellus B.V. v. Mr. Oren Nehoray, D2010-1115 (WIPO Aug. 24, 2010).
The domain name at issue in that case was intlmovers.org, and it was registered prior to the Complainant’s registration of its INTLMOVERS trademark. However, it was registered after the Complainant started business using the intlmovers.com domain name. Sure looks like classic cybersquatting, doesn’t it? Indeed, the Panel in that case noted that “when the Respondent registered the Domain Name he must have been aware of the Complainant and Complainant’s website.”
But, in the immortal words of Lee Corso, “not so fast, my friend.” Why, you ask? Because the Respondent argued that he regarded the name as “purely descriptive,” being shorthand for “international” and “movers,” two common words. Strike one.
Then the Respondent produced evidence that the Complainant abandoned a trademark application in the US (allegedly because it was refused on the grounds that it was descriptive; the registration that it obtained later was a Benelux mark). Strike two.
Then the Panel noted that the evidence provided by the Complainant was not sufficiently explained or detailed to establish its marketing expenditures based on its use of the INTLMOVERS mark.
It is possible, of course, to establish trade mark rights in descriptive terms, but where (as here) the rights relied upon (at date of registration of the Domain Name) are unregistered rights, it is incumbent upon the Complainant to produce good solid evidence to support the claim to those rights, the objective at this point being to demonstrate a likelihood that the Respondent would have appreciated that the name was more than a mere description. This is particularly important when dealing with overtly descriptive domain names, many of which although in commercial use give rise to no trade mark rights. If the Complainant’s name, <intlmovers>, was more than a merely descriptive name in 2006, appropriate evidence should have been put before the Panel to demonstrate that fact.
Strike three. (And the Complainant lost.)
What can domain name developers (“domainers”) and brand owners learn from this case? First, there is good support in the body of UDRP decisions for the argument that a purely descriptive domain name, whether word or phrase of words, is fair game, even if another use of the domain name is being used by a company. Obviously, the important factor would be the extent of the use by that company, and how they were using it. For example, I’d argue that my domain, udrp-attorney.com, is purely descriptive: it describes the legal services that I offer to my clients. In fact, there’s several other domains with UDRP and attorney in them, or some permutation. I’ve been at this for about a year now at this domain, but I would doubt that’d be enough time to build up the sort of secondary meaning that would create common law trademark rights in the name as an identifier solely of me and my services. I’d probably argue that’d never be possible, and certainly a domainer could argue that it planned to use the udrp-attorney.com domain name is a generic sense, for example, as a directory of those providing legal services related to UDRPs. Or argue that UDRP stood for something entirely different… ultra-dense reading projects, perhaps?
Second, if you’re a Complainant, remember that it’s always easier to poke holes in your evidence. There are page limits applicable to the Complaint, and rightly so, and you shouldn’t try to bury the Panel under a mountain of paperwork — but you’ve got to show enough evidence of your rights in the mark at issue, and you’ve got to explain it up front, and this is critical even if you have a trademark registration (although I think that certainly makes it easier). Note that there was in fact a registered mark at issue in this case!
Apparent Authority and the UDRP
Here’s a very interesting, and instructive, case that just came out of WIPO. It deals with the legal issue of authority — the ability of an employee to bind his employer to an agreement — and more specifically “apparent authority,” which is whether the fellow in question has the trappings of someone we’d expect to have that authority. The question that often arises is, was the person who was relying on the employee’s word acting reasonably in relying on that employee’s statements about the deal? This usually depends on who the employee is, what his title is, and facts like that.
If your first thought is, “What the heck’s this got to do with the UDRP?” you’re definitely on the right track, as this isn’t something that normally comes up in a cybersquatting matter. But it did in this case, and here’s why.
Apparently (sorry), there was a meeting at a tradeshow between an employee (of disputed level/authority within the Complainant’s company) and the Respondent. The Respondent inquired about Complainant’s lack of web presence, and the Complainant’s employee gave some reason for not registering some domains related to the names of its products (SWEEPEX / SNOWEX). The Respondent said he wanted to register the domain names, and the Complainant’s employee allegedly said “I don’t think that’ll be a problem.”
The Respondent’s version of events is that he initially drew attention to the Complainant’s lack of Internet presence by talking to a person the Respondent calls the account manager and the Complainant calls a salesman (hereafter the “employee”). This took place in either 2003 or 2004 at a CIWM [assumed to mean the Chartered Institution of Wastes Management] trade show. In a signed letter from the employee dated April 20, 2008, addressed “To Whom It May Concern”, presumably elicited by the Respondent, the employee confirms this version of events, states an ethical reason why the Complainant did not then wish to have an Internet presence, and states: “Mark wanted to register the domain names for Loadlift Limited to sell Broadwood International’s sweepex and snowex products. I told Mark that this wouldn’t be a problem and that Broadwood International would be happy using Loadlift Limited as its effective internet agent.” (emphasis added)
Here’s what the Complainant said about that alleged agreement:
The Complainant counters that the Respondent has not established that the employee was entitled to give such consent or to bind the Complainant without the express permission of the directors, which was not given. (emphasis added)
Okay, stop right there. First, I think the Complainant made a critical mistake here. The Respondent doesn’t have to establish that the guy had the power, the legal authority, to do anything. It’s not for the Respondent to prove any such consent, all he has to do is create a plausible possibility that he had a deal, and he relied on that.
Here’s why that is: if there’s any colorable, credible argument that you got permission to register the domain name, then you could not have registered it in bad faith. For there to be bad faith registration, you’ve got to have either an intentional bad faith motive or (I would argue) some sort of reckless disregard for the legality of your action, a kind of willful blindness; cybersquatting, which the UDRP was implemented to combat, is based around that bad faith.
So all a Respondent has to do is point at a deal that was made between it and one of Complainant’s employees. Could he rely on that in a lawsuit? Maybe, maybe not… the factual inquiry in a lawsuit as to the reasonableness of that reliance would be much more in depth. But it’s enough here that the Respondent brought up this deal, pointed to the letter, and the Complainant could only say “well, he didn’t have that authority.”
That may be true, but it wasn’t bad faith for the Respondent to rely on that. (Maybe if the guy’d been a janitor, sure. Anyone know of such a UDRP case? Would be interesting to contrast it.)
There was also some evidence before the Panel that the Complainant acquiesced in the registration, got the Respondent to sign a distributorship or licensing agreement of some kind, and asked him to transfer the domains to it several times. But these requests were years after the original registration, which was itself in advance of the Complainant’s registration of its marks. That certainly did not help the Complainant’s argument that the employee didn’t have the proper authority, since it seemed to have ratified the deal.
Now, contrast this case with a different factual scenario, where the Respondent registers a domain name without talking to Complainant or its employee. It then approaches the Complainant and says, let’s make a deal. Complainant says, okay, but you need to transfer those domains to us. Respondent never does, and eventually the deal goes sour and Respondent refuses to transfer the domains without a big payment, and uses the domains in some way to profit (typically through sponsored ads). I think in that case, the Respondent is a clear and classic cybersquatter, who had a bad faith intent at the time of registration and then, later, used the domain in bad faith. Even though we’ve got a gap of time in between the two sub-requirements of the third prong of the UDRP, I think the result should still be the same. In fact, I even discussed just such a case last year. And for a case very similar to the present one, see this post, also last year.
From a best practices standpoint for companies/brand owners, you need to make sure that you’ve got a good handle on what your employees are doing. And if they bring something like this to you, you need to get on it, quickly. Your marks are your property, and you’ve got to defend them, or risk losing them. And in the domain name space, you could foreclose your ability to recover under the UDRP if your situation mirrors that of this case. Court is always going to be much more expensive.
Visa’s UDRP attempt on premiercard.com fails
Visa recently lost a UDRP over premiercard.com, even though it does have a Community (EU) trademark registration on the word PREMIER dating from 2002 and a French registration dating from 1996, along with the obvious use in commerce in the financial, credit card sense. Is this another case of the geography defense?
Yes and no. The Respondent, located in Charlestown, St. Kitts and Nevis (I’m not sure if that’s two islands, or what), claimed that it had no knowledge of Complainant’s trademark registration in 2008 when it registered the domain name. The Panel noted
The Complainant has not furnished any evidence of the reputation of the mark to assist this Panel in deciding on the credibility of this statement.
. . . .
This Panel notes that the trademark registrations relied upon by the Complainant all pre-date the acquisition of the disputed domain name by the Respondent in 2008 and the Respondent would have constructive notice of same. On the other hand each of the registrations relied upon by the Respondent with the exception of the French registration number 96 645266 are for device marks. The USPTO decision relied upon by the Respondent shows that PREMIERCARD was the subject of a trademark application in the United States in 2004. It also illustrates the weakness of the mark relied upon by the Complainant which is obviously a very descriptive combination of a noun and a laudatory ephitet.
So the Panel seems to suggest that geography would have been no defense here, as it says the Respondent “would have constructive notice of [Complainant's registrations in France / EU].” But it also called into question the applicability of those registrations to the present dispute, noting that these were device marks, not simply word marks — obviously, it’s difficult to see how a domain name could be used in a device sense, so that’s a critical distinguishing feature for the Respondent to draw attention to. It’s also instructive for brand owners: when registering your marks, one would think word marks would be preferred, at least to protect online branding.
In addition, the Respondent pointed to a failed USPTO filing in 2004 on “premier card.” Powerful and persuasive evidence, that. So not only does the Respondent get to argue “your mark is generic and not worthy of protection,” but the USPTO has also said “the mark is generic and not worthy of protection.” Ouch. That’s a tough hill to climb. And probably doubly so because the Panel felt that the Complainant didn’t provide any evidence to show that the Respondent did know about it’s registration.
One letter can make all the difference
In a domain name, that is. A recent decision out of NAF showcases this important point. In the decision, Dancesoft filed a complaint about dancepartners.com, claiming that the domain infringed on its DANCEPARTNER.COM mark. The mark was registered in 2004, with a claimed first use in commerce of about 2003 (although Complainant claimed it was using its site in 1998). The domain was registered in December 1999, by the Respondent.
The Panel’s decision summarizes — at length — the parties’ arguments. For the most part, Complainant argued that the domain was confusingly similar to its domain name / mark, and that the Respondent had demanded unjustifiable payment to transfer it. The Respondent wisely attacked the enforceability of the mark, arguing that it was using the dancepartners.com domain generically (in addition to registration that was prior to the registration of the mark).
That’s a good argument. And the Panel agreed.
Respondent claims that he deactivated and reactivated this routing feature once but that the Domain Name has been used to redirect Internet traffic to <dance.net> until the present except for a period of one year where Respondent attempted to sell the Domain Name and parked it with <sedo.com>. The Panel may find that these activities constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
As noted above, Respondent also maintains that the terms “dance” and “partners” of the Domain Name are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel accepts that the terms “dance” and “partners” have a particular descriptive meaning, particularly for people and entities looking for dance partners or to put dance partners in touch with each other.
On this basis, the Panel finds that Respondent is involved in the “dance” area and has established sufficient rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).
This factor is also relevant in so far as the evidence seems to establish that Respondent was using the Domain Name before Complainant had established any effective rights in the DANCEPARTNER.COM mark.
The big thing here, though, is that use. What is the Respondent doing with the domain name? That is often the critical question for any defense to a UDRP claim. A parked page with PPC ads may be just fine, provided there’s no evidence of intentional targeting, or possibly reckless disregard of such targeting of the Complainant’s business under its mark or links to its competitors.
But the defense is much, much stronger when there’s an actual business of some sort being conducted on the domain name at issue. If you’re using dancepartners.com generically to help people find dance partners in their area, that’s pretty solid evidence that you have some rights or legitimate interests in the domain name. At least, you’ve got enough to kick the dispute out of the UDRP and into the courts (if the Complainant wants to go that route).
So one letter can make all the difference in the world for your defense. If you’ve been accused of typosquatting and you’re operating a business in a similar fashion to this, you’ve now got some good arguments to make back to the other side, if they’re pressuring you to give up the domain name or face a UDRP. For a full analysis of your case, send me an e-mail.
Contract disputes & the UDRP
One of the ways your UDRP can get dismissed by the Panel without a decision one way or the other is if there is some sort of underlying business or contract dispute, or even litigation, going on at the same time as the UDRP. This recent NAF dismissal highlights some of these contract dispute circumstances. The domain at issue there was naturalsapphirecompany.com. Apparently it was registered by the Respondent as part of a deal with the Complainant to set up a website, or websites, even using the Complainant’s credit card to do so. Of course, the Respondent was still listed as the owner of the domain name.
This is an important consideration, as a best practices issue: under no circumstances should you ever, as a business, allow someone else to register domain names on your behalf. If for whatever reason they need access to them, you can give (limited) access to whoever you need to, for example to run the website’s content, whatever. But actual ownership of the domain name property should always remain with you as the business. Period! (You can, of course, put some sort of statement in your contract indicating that you have all right and title in the domain names, which is fine … until something goes wrong and the other side doesn’t give up the domain names. Then what do you have to do? Sue on the contract, of course. And that’s expensive. You don’t like wasting money, do you? No, you don’t. Trust me!)
There’s several pages of summary from both the Complaint and the Response, and the additional submissions from both Complainant and Respondent, before we get to the Panel’s decision. Curiously, the Panel actually makes it a point to note that it can hear the UDRP even though there are concurrent court proceedings (in criminal court in India, apparently), in other words, it’s not required to dismiss the complaint immediately.
Of course, that doesn’t matter, ultimately, because “the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP.” The Panel goes on to cite some language from a few prior UDRP decisions, and closes with:
This dispute cannot be resolved by simply determining whether domain name and asserted mark are identical; whether Respondent has rights in the name; or, whether Respondent has used the asserted mark in bad faith. Therefore, the Panel has decided to dismiss this case.
Then the Panel went on to discuss a potential fatal flaw in Complainant’s case, that its claimed rights in the The Natural Sapphire Company mark were quite weak. I’m not sure if there’s a typo in the Panel’s decision or not, but it discusses the Complainant’s claim that its common law rights attached from the date that it registered “thenaturalsapphirecompany.com” (with “the” added) as not being strongly proved. Common law rights in marks are often difficult to prove, and abundant evidence may be required. And don’t forget the geography defense. Of course the Panel closes out by saying that it’s not reaching this issue in deciding the case, but I think it’s clear that if it had, it would not have found for the Complainant.
WHOIS history, registration dates, & bad faith
Wow, this recent WIPO decision has it all: a big firm (Latham & Watkins) getting splatted, a Respondent who didn’t even bother to respond, a little bit of the “geography defense” and some genericness arguments about the claimed mark, a failure to show proof of common law rights in a mark, a domain registered in 1999, and some laches language! Here it is: American Funds Distributors, Inc. and the Capital Group Companies, Inc. v. Eunice May.
So, what the heck happened? Well, Latham got “Lathamed” sort of, heh.
First, the domain name at issue: americanfund.com. Note the missing “s” … the Complainant argued that this was a clear case of “typosquatting,” a deliberate misspelling of the trademark to profit on misdirected/confused customers, people who just missed typing the last “s” or didn’t realize it had an “s” on the end, what have you. (This was certainly a more profitable practice before the rise of search engines like Google, and the search engine toolbar in most browsers, I think. It seems to me that most people now just search for their destination, rather than type it into the address bar. But it must still be profitable, because so many squatters do it.)
The biggest problem here was bad faith registration, and unfortunately for the Complainant, all of its marks were registered after the original registration date of the disputed domain name.
However, in the Panel’s opinion, there is a glaring detail, which the Complainants have blithely failed to address in their assertions and in their evidence. That is that the disputed domain name was actually registered (first created, according to the WhoIs information) in February 1999, before any of the Complainants’ cited trademarks was actually registered or even applied for – with the sole exception of US Reg. No. 1,582,924 for AMERICAN FUNDSLINE. No evidence has been presented to the Panel to raise any doubts that the present registrant and Respondent in these proceedings was not the original registrant at that time of initial domain name registration. The Complainant has simply not addressed the issue. The Panel therefore has no reason not to accept that the Respondent and current registrant of the domain name was also the original registrant when the domain name was first created back in 1999. (emphasis added)
Oops. Still, they could have gotten around this by showing common law rights in the marks prior to that registration date. And to their credit, it appears that they at least made that assertion.
The Complainants have claimed that the AMERICAN FUNDS name and mark “are well-known and famous throughout the United States and internationally” and that the Complainants have “established common law rights … through extensive use and promotion … since at least as early as 1970”, but the Complaint does not include any evidence to support the claimed nature and extent of this fame, nor of the common-law rights and goodwill, which the Complainants say have been imparted by such extensive use. (emphasis added)
As is always the case with the UDRP, the burden falls on the Complainant to prove its case, you cannot rely on a default situation to make your argument for you.
The Panel goes on to talk a bit about the location of the Complainant (the US) and the Respondent (Hong Kong?), and the possible generic use of the disputed domain name.
The Complainants only obtained objectively identifiable (i.e. registered) rights in AMERICAN FUNDS per se after the disputed domain name had been registered, and then again only in the United States. As noted in Section B above, the words “American fund” and “American funds” may also clearly be legitimately used in a generic, descriptive sense – and a simple Google search for “American Fund”, for example, reveals that indeed there are other financial businesses who refer to an “American Fund” or “American Funds” in such terms. The situation in the present dispute is clearly not comparable to eBay Inc. v. Sunho Hong, supra, where the highly distinctive mark EBAY was at issue and the complainant itself had relevant registered rights in South Korea.
That’s pretty interesting to note, I think, because we have a Respondent who didn’t even respond, and a Panel that’s arguing (pretty forcefully, I might add) that the domain is likely generic.
Finally, there’s some discussion of laches:
The Complainants did register their domain name <americanfunds.com> in 1995, before the disputed domain name was registered, but no evidence has been submitted as to when the Complainants own domain name was first being used for a website.
. . . “Typosquatting” was not unknown in 1999, but if the disputed domain name was registered as a “typosquat” in 1999, that begs the question of why the Complainants have taken 12 years to crystallize their allegations in the present Complaint.
. . . The Panel does not accept the Complainants assertion that the use of <americanfund.com>, as it is now, should be characterized as “blatant typosquatting” and that the disputed domain name must therefore also have been registered – 12 years ago – in bad faith.
So while the Panel doesn’t explicitly endorse a laches defense, it does make some noise about whether this Complainant shouldn’t have been paying a little bit closer attention to what was going on out on the Internet under its purported mark.
Once again, if a domain is registered before you registered your mark, you must show that your common law rights in the mark existed before that domain was registered, or there can be no bad faith registration.
Geography as a defense to a UDRP
The strongest response that a registrant can raise usually comes in the form of an argument that goes like this: “I live in <xyz>, and there’s no way I could have possibly known about the <trade/service>mark rights in country <ABC>. Therefore, there’s no evidence of bad faith.”
I’ll call this the Geography Defense. Because trademark and service mark protections vary by jurisdiction (country, or even state / province), it’s entirely possible that a smaller, local or regional mark might be very well known in its limited geographic area, but completely unknown to the world at large. So, a registrant in India may not be aware of a small retail goods producer in Portland, Maine.
Of course, everyone always wants to claim this defense, because it is so strong. Whether it’s actually true is always open for debate.
In this recent WIPO decision about crops.com, a Belgian company went after a domain name that had been registered in 1998. They did so because they claimed rights in a CROP’S mark, first registered in 1993 in BeNeLux (Belgium, Netherlands, and Luxembourg), as well as a more recent European Community registration dating from 2005.
The Respondent claimed that the crops.com was a generic gTLD, and that it had been using it as such (for generic advertising related to crops, apparently not related to the CROP’S goods or services).
The Panel agreed. Further, it noted the Respondent is in the US (Stillwater, Oklahoma?), and would have had no way to know about the BeNeLux registration back in 1998.
The Complainant provided evidence of trademark rights based on its European trademark registrations, and the Complainant’s rights in some of the CROP’S Marks predate the Respondent’s registration of the disputed domain name by five years. However, the Complainant did not demonstrate business activities in the U.S., neither at the time of the registration of the disputed domain name nor at present. It applied for the registration of the trademark CROP’S The natural choice with the USPTO in 2006, however, without claiming any use in commerce. Furthermore, the Complainant does not state it was well known in the U.S. at the time of the registration of the disputed domain name (or even that it is well known there today). The Respondent is based in the U.S., while protection of the Complainant’s CROP’S Marks is limited to the European Union. As a result, in the Panel’s view, the Complainant’s submissions are not sufficient to establish that the Respondent knew of the Complainant’s trademark rights (or the Complainant’s existence, e.g. through its website) in 1998 and that it registered the disputed domain name in bad faith.
So we gain a little bit from a close reading of this paragraph. In arguing for the Geography Defense, you need to show (1) a limited application of the opposing side’s territorial trade/service mark protections; (2) limited exposure outside of that jurisdiction — don’t forget to address potential common law arguments; (3) some credible evidence to support your claim that you didn’t know about the mark. Here, that meant using the domain name in its generic sense only. There’s not a lot of discussion of the advertisements placed on the webpage, but apparently
[t]he Respondent provided evidence that the disputed domain name was used in connection with agriculture-related advertising links at least in 2003 and 2004.
So that was apparently enough for the Panel.