Domain Spats & Disputes

Since registrations of .me TLDs opened up, a lot of domains with the .me extension have been registered. Many of them involve domains that use trademarked terms. Georg Kohler registered porsche.me, among others. (He also registered toyota.me — look for a WIPO case soon involving that one, too.)

WIPO has ordered the transfer of porsche.me to Porsche the car company. In its decision, the panel noted that the addition of the domain TLD extension (.me) is insufficient to distinguish the domain from the trademarked term Porsche. In other words, porsche.me is functionally equivalent to Porsche for WIPO trademark purposes.

It is also noteworthy that the panel included commentary on the fact that Kohler offered to sell porsche.me to Porsche after they sent a cease-and-desist letter. The decision said, “the tenor of the Respondent’s email … is not consistent with the bona fide reimbursement of costs and a fair intention to use the Disputed Domain Name as a non-commercial fan club site.”

Although Kohler claimed that he intended to use the domain for non-commercial purposes as a “Porsche fan site,” his offer to sell the domain to Porsche suggested that a non-commercial fan site was not his true purpose in registering the domain. The panel wrote, “The Panel has little difficulty in concluding that the Disputed Domain Name was registered primarily for the purpose of selling it to the Complainant.” The decision went on to say, “Registration of the Disputed Domain Name was an opportunistic act from which the Respondent thought he could gain.”

It also didn’t help Kohler’s case that he had registered other well-known automotive brand domains. Said the panel, “This finding is supported by the fact that the Respondent has registered domain names which correspond to other well known brands such as ASTON MARTIN, JAGUAR, TOYOTA, MITSUBISHI, BENTLEY and FIAT.”

Read the full porsche.me WIPO decision

The National Arbitration Forum ordered that 41 domains resembling weatherunderground.com and wunderground.com be transferred to The Weather Underground, Inc. The domains in dispute included watherunderground.com, weaherunderground.com, weahterunderground.com, weartherunderground.com, weatehrunderground.com, wunnderground.com, wundergtound.com, wundergroundr.com, wundertground.com, wunederground.com, qwunderground.com, swunderground.com, winderground.com, wumderground.com, wundeerground.com, wunderfround.com, udergroundweather.com, undegroundweather.com, undergoundweather.com, undergroudweather.com, undergroundwaether.com, and other similar domains.

The Respondent in the case was Navigation Catalyst Systems, Inc., which has a history of registering domains containing registered trademarks and brand names. NCS initially filed a response claiming that it was “not aware of complainant’s trademarks,” but this defense didn’t have legs.

The NAF panel found that all 3 elements of cybersquatting were present: The domain names were “confusingly similar” to the complainant’s trademark; the respondent did not have any “rights or legitimate interests” in the domains; and the respondent registered and used the domains “in bad faith.”

The Weather Underground, Inc., registered the trademarks back in 1999 and 2000, and NCS registered its look-alike domains between 2004 and 2008.

Read more at TraverseLegal.

Seven years ago, a guy named Chris Dunne, who happens to be a big fan of the Tampa Bay Devil Rays baseball team (who play at Tropicana Field), registered the domain tropicanafield.com. He built an actual site — not a parked page filled with ads, but a real site, with information on the businesses surrounding the stadium, including accommodations, restaurants, nightclubs, and attractions.

For years, while the Rays were a losing team, PepsiCo, which owns Tropicana Products, ignored Dunne’s use of the domain. When the team came out of last place for the first time ever, Pepsi popped up and said, “Give us the domain.”

Previous case law has held that when trademark holders fail to protect their trademark in a timely manner, the theory of laches can be applied — which means, basically, “you snooze, you lose.”

Pepsi snoozed while Chris Dunne was hard at work building a useful and informative web site. Read more about this case at thedomains.com.

Domainer Greg Ricks has lost the 3-letter domain lti.com in a UDRP suit brought by a hotel company that is part of the LTI Internation Hotels Group, a German company that has been doing business for years with the domain lti.de.

Ricks had the domain parked and displaying advertising that included numerous ads for hotel and travel services, which, the panel held, created a “likelihood of confusion.”

Ricks, who is usually aggressive about defending his domains, did not respond to the WIPO complaint.

The full WIPO decision can be read here.

Meg Whitman, who stepped down as CEO of eBay earlier this year, has been considering running for California governor in the 2010 election. Since leaving her eBay post, Whitman has been serving as senior advisor to John McCain’s presidential campaign.

Although Whitman says she hasn’t yet made a decision about running, she wanted to register some appropriate domain names for her possible future campaign. She found that megwhitmanforgovernor.com, megwhitman2010.com, meg2010.com, whitmanforgovernor.com and whitman2010.com were all registered by a Thomas Hall back in January, just days after it was first reported that Whitman was considering a run for governor.

According to a report in the San Francisco Bee, Whitman has filed a UDRP petition with WIPO in a bid to wrest control of the domains from Hall. Whitman’s lawyers contacted Hall in June to demand that he turn over the domains to Whitman, the Bee said, but Hall declined.

Earlier this year, Whitman gained the domain megwhitman.com in an out-of-court settlement after filing a similar UDRP petition.

WhoIs, the universal registry of domain name registrant information, does not represent evidence of domain ownership or legal rights, according to a federal court decision from 2007.

According to reports in Domain Name News and the Internet Library, the court declared that a change in a domain’s registrant information does not constitute legal change in ownership, because the WhoIs records are a privately maintained system and not a statute-based system of title.

The case involved the domain express.com, which was owned by Express Media Group, LLC. Apparently, the domain’s registration information was changed without the knowledge of Express Media Group, and subsequently, the defendant, Greg Ricks, bought the domain from the “new owner.”

The court ordered the domain returned to Express Media and held that Ricks was guilty of conversion, which in California is “the wrongful exercise of dominion over the property of another.”

It’s unclear in the various reports how the domain’s registration was changed, or whether the defendant in the case was involved in that change. The court’s decision states that the registration information was changed by “unknown persons, presumably cyber criminals,” and noted that the defendant contacted the “new owner” about purchasing the domain “very soon after the contact info on the registration was changed. ”

The domain was registered through Network Solutions. The registration agreement authorized Network Solutions to process account transactions initiated through the use of the user’s password, and cautioned that use of the service was at the registrant’s own risk

In two weeks, a Kentucky judge will hear arguments on the ordered seizure of 141 gambling-related domains that Kentucky doesn’t like because online gambling competes with the state’s hugely profitable horse-racing industry.

In the report at domainnamenews.com, a Kentucky district court has dismissed all objections put forth by the owners of the domains to be seized.

Judge Thomas Wingate (a moron of the highest order) ordered the seizure of the domains purportedly to protect innocent Kentucky children from the evils of gambling, but the action was a transparent move to protect the state’s revenue from horse racing.

It has been pointed out elsewhere that the move is the equivalent of Saudi Arabia seizing jackdaniels.com because drinking is illegal in Saudi Arabia.

His Dishonor Judge Wingate ordered the seizure in September, requirig the owners to block access to Kentucky residents or lose their domains. According to DomainNameNews, a hearing will be held Nov. 17, 2008.

The well-known registrar GoDaddy promptly rolled over for Judge Wingate and turned over the domains. Network Solutions sent a legal team to fight the action. (More here.)

A U.S. federal district court judge in June froze U.S. assets and ordered a stop to fraudulent domain “renewal notices” that were sent to domain registrants by a Canadian company called Data Business Solutions, which also does business as Internet Listing Service, ILS, ILSCORP.NET, Domain Listing Service, DLS, and DLSCORP.NET.

The practice consists of sending official-looking “invoices” warning registrants that their domain will expire if they don’t renew it in time. This is, of course, true, but the notice further implies that the company behind the “invoice” is the actual registrar. In reality, it is not, and when unsuspecting victims pay for the “renewal,” their domain is transferred to Data Business Solutions from the registrar where they registered it. Alternatively, the “invoice” billed for an annual “domain listing service” or “search engine listing,” leading consumers to believe that the invoice was for a service they had signed up for and that was necessary for their site to be found in search engines.

According to the report in Network World, the the FTC charged that “the ‘invoices’ represented that the defendants had a preexisting business relationship with the consumer. The ‘invoices’ also represented that consumers owed money for the continued registration of their Web site names and that the defendants would provide continued registration services for consumers.”

The FTC’s report can be found here. Further information is also available at flyteblog.com and the webmail blog.

TechCrunch reported in April that Network Solutions was highjacking subdomains to serve advertising-link filled pages when a user requests a subdomain that isn’t used by domains hosted with NetSol.

This means, for example, that if I hosted domainspats.com with Network Solutions, and if I did not set up a subdomain for domains.domainspats.com, or spats.domainspats.com, or anything.domainspats.com, if anyone typed that address into their browser, instead of getting my standard error page, they would get a page filled with ads for which NetSol gets paid.

This would include domains that aren’t set up to resolve the www version of the domain (e.g., www.domainspats.com), and even with www set up properly, it would apply to any and all typos, such as 222.domainspats.com or eee.domainspats.com, or ww.domainspats.com or wwww.domainspats.com.

According to TechCrunch, this practice is affecting hundreds of thousands of sites hosted with Network Solutions.

Shame on Network Solutions. It’s not the first time they’ve been caught engaging in questionable behavior, and it almost certainly won’t be the last.

According to the temporary blog set up by MakeUseOf.com, the MakeUseOf.com domain was highjacked right out of the owner’s GoDaddy account.

According to the report, the attacker somehow got the GoDaddy account details by hacking into the account holder’s Gmail account. Apparently, social engineering was also used to convince GoDaddy to go ahead and transfer the domain immediately.