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.

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.)

The High Road (aka THR, formerly found at thehighroad.org, now thehighroad.us) is one of the largest and most well-respected guns and shooting messages board on the Internet. It was launched by photog Oleg Volk when The Firing Line (TFL) was shut down. From the beginning, the site and domain were considered to belong to Oleg. The domain was originally registered by Rich Lucibella, who owned and operated TFL. Technical support and hosting were provided by Derek Zeanah.

At some point, Rich wanted to transfer the domain from his own registrar account into Oleg’s. Oleg asked Derek to handle the transfer. Unbeknownst to Oleg, Derek handled the transfer by transferring the domain to himself. The site continued to operate “as is” with no one but Derek aware of the status of the domain’s registration.

Later on, down the a piece, Oleg was exploring the idea of a commercial sponsorship for the site. There was disagreement among Oleg, Derek, and the forum’s moderators about whether or not this was a good idea.

This post is not about whether THR should have any sort of commercial sponsorship. That decision is rightfully the owner’s decision to make.

Derek decided at that point that he was co-owner of the site. He objected vigorously to the sponsorship. He shut down the site briefly. He locked Oleg out of the forum’s Admin area, along with other forum moderators who sided with Oleg in the dispute. He refused to turn over the site’s files and database, and refused to transfer the domain into Oleg’s name.

Rich Lucibella, at the time he transferred the domain, intended to transfer the domain to Oleg, and believed that Derek was properly acting as Oleg’s agent. Rich in fact has stated publicly,

At no time was I aware that Derek was acting as anything but Oleg’s personal agent. Had I been aware that Derek was acting for his own benefit I would never have transferred the domain name to him. It is my position that Mr. Zeanah had fraudulently misrepresented himself to me. If he persists in publicly hiding behind my statements, taken out of context, I will have little choice but to join this legal fray, recover the domain name thru the courts and pursue Mr. Zeanah for my legal fees.

Attempts to settle the matter in private have failed. Oleg has re-opened The High Road at thehighroad.us, and has filed a suit in federal court to resolve the matter.

Read more about TheHighRoad Highjacking here.

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.

A former program manager at Microsoft was sentenced in July to 22 months in prison for defrauding Microsoft out of approximately $1 million in falsified domain registration fees.

According to PC Advisor, Carol Gudmundson used her corporate American Express card to pay for domain registration fees — but she would then submit copies of invoices that showed inflated charges. She also billed Microsoft for domain registrations that had already been paid for.

Gudmundson got off easy; she could have received as much as 20 years in prison.

She had a history of domain “problems” with Microsoft. She was listed as the contact for Microsoft’s hotmail.com domain when it went offline in 1999. In that incident, about 60 million users were unable to access their hotmail e-mail accounts because the domain’s registration had not been renewed.