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

Yale University has filed a UDRP complaint with WIPO in an attempt to get control of the domain yale.mobi.

Currently, yale.mobi is owned by Interwebgroup, LLC, and the domain is parked with GoDaddy, with no content of its own.

One can imagine a variety of legitimate reasons someone might have for yale.mobi. An individual whose last name is Yale, perhaps? Or a site critical of Yale University, exercising free speech rights to criticize Yale. Or a commercial concern with Yale in its name: the Yale Locks company, or Yale Europe, which sells forklifts and other materials handling equipment, or Yale Windows and Doors, might all have a legitimate interest in the yale.mobi domain.

There are reports that the domain owner offered the domain to Yale U for $900. This could be result in an interpretation of the domain registration as being in “bad faith” — being as they stood to profit from selling the domain to Yale U.

The Sarasota Association of Realtors first charged one of its members, Marc Rasmussen, with an ethics violations, and then, after losing that case, dragged him to an ICANN hearing to get control of his domain.

Even though he won the ethics hearing, Rasmussen lost the ICANN arbitration, which ordered that the domain be transferred to SAR. He has filed a federal lawsuit to regain/retain control of his domain. Then, even though Network Solutions, the registrar of the domain, told him they would keep it in place and locked until the litigation was over, NetSol almost immediately transferred the domain to SAR, which promptly began redirecting it to their own lame site.

Read more about it here and here.

Tucker Carlson, co-host of CNN’s Crossfire and anchor of of MSNBC’s Tucker and PBS’s Tucker Carlson: Unfiltered, went to battle with a company called Domain Privacy Ltd. over the domain tuckercarlson.com. Carlson filed a complaint with WIPO (World Intellectual Property Organization). The domain was registered in December 2003; the complain was filed in early 2008.

Under WIPO’s rules, the Complainant (in this case, Tucker Carlson) has to prove three elements:

1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3. The Disputed Domain Name has been registered and is being used in bad faith.

The UDRP (Uniform Domain Name Dispute Resolution Policy) normally does not cover the use of personal names, but “in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.”

The WIPO panel found that Tucker Carlson has a trademark interest in the name Tucker Carlson, and that the domain tuckercarlson.com is identical or confusingly similar to Tucker’s name. This established the first required element of the complaint.

The panel also found that Domain Privacy Ltd. had no rights or legitimate interest in the name — establishing the second element.

In order to prove the third and final element required for a UDRP complaint, Tucker had to prove “bad faith.” In order to prove bad faith, Tucker had to show one of the following four elements:

1. Circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
2. The registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
3. The registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. By using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

The website associated with the domain showed that it was offered for sale for an amount significantly higher than the costs associated costs related to registration and maintenance. The panel found that this constituted bad faith.

The panel ordered that the domain tuckercarlson.com be transferred to Tucker Carlson.

Source