Microsoft Scores PSXBOX.NET in Dispute

Microsoft is a company that needs no introduction, but for those who have been under a very low-tech rock for the past 20 years, they are the dominating software force in the PC market. Their operating system, Windows and their office suite are used on the majority of the world’s computers. Microsoft also competes in the gaming console market with its Xbox 360. To say that it would be suicide to take them on in the legal arena is probably an understatement.

Nevertheless, someone decided to register a domain name with the word “xbox” in it. That someone is an actual company, MeiXun Technology Ltd, based in GuanZhou, China. Microsoft, the trademark owner of XBOX filed a complaint with the National Arbitration Forum on June 29. The complaint and all correspondence were submitted in English and Chinese. MeiXun, however, did not respond to the cybersquatting allegations.

The panel found that the name was confusingly similar to the XBOX trademark, with only “ps” added to the front of it (possibly to indicate PlayStation). Rather than make it acceptable because of the prefix, the panel found that it only adds to confusion by joining two competing gaming platforms. The website attached to the domain was used to sell third party modification chips for Xbox and other consoles, which is illegal in the United States. The panel found that the respondent had registered the domain name in bad faith and ordered the domain be transferred to Microsoft.

Source: National Arbitration Forum
Photo: Flickr

UK Businessman in Heated Dispute Over .AE Domain

As if the .ae top-level domain craze could stand to get more sensational, Michael Reed, a businessman from the United Kingdom, is complaining that the UAE domain regulator, .aeDA unlawfully took back a domain he had legitimately registered. The domain in question is Irena.ae. Reed owns a 12-year-old trademark for Irena, a nutritional supplement, in Europe and the UK.

According to Reed, however, when the UAE government made a deal with IRENA, the International Renewable Energy Association, they snipped his registration from over his own registrar’s head. The regulator .aeDA argues that Reed did not register the domain until two days after the IRENA EU statute and that he posted a “for sale” advertisement on youcanbuythiswebsite.com. When they contacted him, they said he did not respond in a timely manner.

Reed contends that he never offered the domain for sale. The .aeDA asserted that its policies grant it permission to revoke registration of domains that are identical to inter-governmental organizations (IGOs), but there is no mention of it in the policy document. Reed is threatening to pull his business out of the UAE completely. Now it will be up to the UAE to decide which is more important to them: their inter-governmental agreements or the business interests and potential commercial benefits of one man.

Source: Arabian Business
Photo: Flickr

WIPO Rules Against a Trademark Holder

In what is clearly an exceptional yet not completely unique type of case, the WIPO has ruled against a legitimate trademark holder in a domain dispute. Runway Beauty Inc. filed a complaint against Errol Hernandez, who registered and parked runwaymagazine.com, runwaymagazine.net, and runwaymagazine.org. The website opens to a portal stating that it will be a social site about fashion and beauty but with no other content as of yet.

The complainant, Runway Beauty, has a website called runwaymagazine.us and offers an international print magazine about fashion, beauty, and entertainment. They own the U.S. trademark Runway Magazine, registered in 2008. The respondent first registered the disputed domains back in 1999. He intended to make a website, but never found the time or resources. In 2008, when he received complaints from Runway Beauty Inc., he began creating a website.

The panel acknowledged the first two conditions of UDRP: that the disputed domains are confusingly similar to trademarks held by the complainant and that the respondent had no legitimate business interests or rights in the domain. On the third crucial point, however, the panel did not believe Hernandez had registered the domains in bad faith. He registered the domains long before Runway Beauty even existed and always intended to make a legitimate non-commercial website.

Source: WIPO
Photo: Flickr

KBToys.com sells for £1.25 million

After a business closes, its intellectual property- domains, trademarks, logos, etc.- still have value and can be sold. Bankrupt toy retailer KB Toys took advantage of this to pay its creditors when it sold its trademarks, logos, and KBToys.com domain for £1.25 million ($2.1 million USD) yesterday.

Retail operator CE Stores won the auction. The domain and other auctioned items are desirable because they are already well-known to consumers. KB Toys used to have stores in malls all over the United States, and the buyer can capitalize on the brand‘s existing reputation by launching a new store under the defunct name.

Earlier this year, Toys.com, the former home to a large Internet toy retailer, was bought by Toys-R-Us for £3.1 million ($5.1 million USD).

Source | Reuters

Photo | Flickr

Twitter Outsources Domain Name Portfolio

The micro-blogging giant Twitter has handed over management of its domain portfolio to an Australian registrar. It includes a two-year, deal during which the company will manage all of Twitter’s domains. It is a common practice for registrars to provide single portals for customers who need to manage multiple domains.

With this deal, however, the registrar will not simply provide registration services. It will actually look after the domains, renew domains before the expire, and register new ones that suit the company’s interests. Usually this is something done in-house by a company’s IT department. In some cases this can lead to problems when a single individual has control of a company’s domain.

This may be the indication of a new trend, where companies outsource their domain management to IT specialists, allowing them to focus more on their actual sites and services. Such a service would also be helpful for companies involved in trademark disputes. It is unclear if that is part of the Twitter packaged deal.

Romantic Tours Inc. Wins HotRusianBride.com

In the past, domains that are descriptive rather than actual proper names were not awarded to the complainants. What then is so special about Hot Russian Brides? The difference is that the United States Patent and Trademark Office (USPTO) awarded Romantic Tours, Inc. a trademark for Hot Russian Brides.

If there is blame to be handed out, it should be handed to the USPTO, not the National Arbitration Forum. The respondent, Ilia Zavialov registered hotrusianbride.com, omitting one “s” from Russian and the “s”at the end of Brides. Like many other cybersquatting sites, the domain resolved to a website of click-through ad links, some of which linked to competitors.

The Forum ruled that Zavialov had violated Romantic Tours’ trademark and registered the domain in bad faith. Now all of those men who think they are getting hot Russian brides when the accidentally misspell “Russian” will still get their dream girls. Unfortunately, no hot Russian brides were available for comment.

Source: National Arbitration Forum
Photo: Flickr

Sears loses dispute for my-gofer domains

What do the domains my-gofer.biz,.info.,.net,.org,and .info have in common? Sears Brands, LLC does not have rights to any of them. They apparently thought they did, however, and took the case before an arbitrator. MyGofer is the chosen name and trademark of Sears’ shopping service. Their main website is mygofer.com Sears does own the legitimate MYGOFER trademark.

My-gofer.org is a website for Stage/Film/TV where performers can showcase their talents, and it is a legitimate business. According to ICANN rules of its domain dispute policy, a complainant must satisfy three elements in order to prove that a domain should be transferred to them: 1. Trademark or common law mark,that the domain is confusingly similar to a business name or trademark 2. that the respondent has no reasonable right to the domain, and 3. that the respondent operated in bad faith.

While the first element was undeniable, even by the respondent, the second two were equally deniable. The panel ruled that the respondent was using the two of the domains for legitimate business and had plans to use the others for the same business, which is not in direct competition with Sears or its MyGofer website. Furthermore, there was no evidence that they acted in bad faith, thus no cybersquatting. In this case, Sears loses.

Source: UDRPsearch
Photo: Flickr

SCOPE rinses away cybersquatter

The Proctor and Gamble Company (PG), responsible for products such as Tide detergent, Pampers diapers, and Scope mouthwash, recently filed a domain dispute with Richard Jones, a man who registered scopemouthwash.com and used it for his search portal of miscellaneous advertisements available in multiple languages. PG owns pg.com as well as a website for Scope called getclose.com.

Jones did not respond to the dispute and therefore left it completely up to arbitration panel to decide the outcome, which was pretty much an open and close case. SCOPE is a registered trademark of Proctor and Gamble, which I am sure Jones very well knew. It was also clear that Jones registered the domain in bad faith with the sole intent of profiting from the trademark through random ads.

As with all of the cases like this one, it left me wondering what type of income people like Jones receive before they lose the domains. Cybersquatting continues to be a problem for many website owners, including large corporations with significant interest in protecting their trademarks. According to ICANN policy, the panel ordered the registrar to transfer the domain to Proctor and Gamble.

Source: UDRPsearch

Federal court rejects Hotels.com appeal

The website owners of Hotels.com have been trying to get trademark status for the domain name for over year, but Friday The U.S. Court of Appeals upheld the ruling of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. According to the court, the term “hotels” is too generic to be a trademark. Hotels.com argued that adding the top-level domain .com to it made it their brand. The court disagreed.

Last year Hotels.com conducted a study in which 76% of 277 respondents to their survey associated Hotels.com with their specific brand, but the courts were not swayed. The study, they said, was flawed in not fully making a distinction between a domain name and a brand.

Hotels.com is worried that they would have difficulty suing competitors who use “hotels.com” in Google ads and other search engines to draw traffic to their own sites. It also sets a precedence for other potential generic domains that companies might want to use as trademarks. It could potentially create a web of problems. Because the trademark would be Hotels.com, would the company have the right to dispute Hotels.cm for example? These questions would undoubtedly raise more court cases.

Source: MediaPost
Photo: Flickr

Dolphins.com up for domain dispute

A new case has been filed with the WIPO regarding dolphins.com. The complainant is the Miami Dolphins, a U.S.-based American football team. A quick look at the website reveals that it points to a series of links and ads mostly about the Miami Dolphins. This seems to be the reason and nature of the domain dispute.

If the site were truly about the warm-blooded sea mammal dolphins, I doubt the Miami football team would be so eager to file a complaint. The person or company that registered this domain did it to make money from the Dolphins’ name, and they undoubtedly have. With keywords like “dolphins tickets”, “fantasy football”, and “football tickets”, they have setup a cash machine for themselves.

We will keep you post on the results of this case. As with similar cases, I cannot help but wonder if transferring the domain names over to the rightful trademark owner is enough. People involved in cybersquatting seem content to keep doing what they do. They make money on a domain for as long as they can. When the scam is revealed, they pack up and leave, money in hand.

Source: UDRPsearch
Photo: Flickr