Wikimedia, owner of the WIKIPEDIA trade- or service mark, has threatened to take action against the owner and user of WIKIPEDIAART.ORG. It seems that most commentators are doubtful about Wikimedia’s chances of success based on a Wikiepedia entry.
Archive for the ‘Domain Names’ Category
Wikipedia Takes Legal Action
Sunday, April 26th, 2009Three Little Pigs Decisions
Thursday, February 8th, 2007The National Arbitration Forum announed decisions in three (3) recent domain name disputes. One conflict was resolved in favor of the Complainant; the other two were resolved in favor of the Respondent.
The marks/domain names at issue were:
Magic Johnson
WarGames
Pig
Domain Tasting
Friday, January 5th, 2007The practice of “domain tasting” has soared in the past two years. In late 2004, roughly 100,000 domain names were tested on any given day, and now, the number has ballooned to 4 million, according to Jay Westerdal, chief executive officer of the domain consultancy firm Name Intelligence. Experts estimate that less than 2% of the sites that are tried out for a few days are ultimately purchased by registrants. It’s a bit like being able to get clothes from a store, wear them for five days, and then return them at no charge.
Companies are calling on ICANN to change the rules as a result of abuse by mass domain registrars. Critics say some of these firms engage in what’s called “kiting,” or registering a domain name, returning it within five days, then quickly grabbing it again, without ever paying for it – all the while using them to generate revenue from click-through ads.
Ironically, ICANN says it is not its place to change the practices of registering domain names, at least on its own. Tim Cole, chief registrar liaison for the organization, says that it is up to ICANN’s community to make a clear proposal to change the policy so that ICANN’s board of directors can consider adjusting it. “We’re definitely taking action to inform the community about the issues involved, and it’s up to them to decide what they want to do,” he says. “If someone really wants to change the process, they have to get into public policy debate.” Since ICANN created the 5-day grace period, it’s hard to see how ICANN cannot change the policy on its own.
I suspect this will be an issue that does not go away soon.
Registrar Refuses to Transfer Domain Name
Sunday, September 3rd, 2006Despite an order from a French court, the Australian registrar of the domain name has refused transfer of the domain on the basis that it is not governed by French law and in particular because of the unusual circumstances under which the judgment was obtained.
The Leading Hotels of the World Ltd and Online Travel Group have been involved in ongoing disputes since 1997.
The Leading Hotels of the World Ltd registered the domain lhw.com in 1996 and created a website using this name, which it still does today. One year later, Online Travel Group, a South African company, registered the available domain leading-hotels.com and the following year registered leadinghotels.com which was also available.
Nearly five years later, LHW decided to claim trademark infringement and instituted proceedings against Online Travel Group before the World Intellectual Property Organization. WIPO rejected LHW’s claim and ruled in favour of OTG, stating the company was not operating in bad faith and that use of the domain name leadinghotels.com by Online Travel Group had always been bona fide and used legitimately in connection with the company’s online hotel reservation services. See the decision here.
Tom Cruise Wins tomcruise.com
Tuesday, July 25th, 2006According to this article, Tom Cruise has been awared the domain name tomcruise.com by a WIPO UDRP panel. In a three-member WIPO panel, the domain name was taken from notorious domain name registrant Jeff Burgar and “returned” to Cruise.
Jeff Burgar owns and operates the fan website Celebrity1000.com, which in addition to featuring many third party advertisements, also includes information about celebrities, including Cruise. Burgar has also been involved in domain name disputes with the domain names CelineDion.com, MichaelCrichton.com, KevinSpacey.com, JeffreyArcher.com and others.
Cruise’s legal team made the following arguments: 1) the actor has “common law trademark and service mark rights” in the term Tom Cruise, 2) Burgar was making money from the domain through third-party ads on the Celebrity1000 website, and 3) and that internet users were likely to be confused and think that TomCruise.com was affiliated personally with the website.
Burgar, in this case, did not contest the fact that Cruise has trademark rights in his name. Instead, he argued that no likelihood of confusion exists because people who enter tomcruise.com are not expecting to get in touch with the actor or even “purchase” his services, such that they are alleged to be. They are looking for information about the actor. For my part, this is a valid argument.
Moreover, Burgar argued that he has owned the domain name for ten (10) years and, essentially, that laches should prevent Criuse from coming forward now to try to secure the domain name that he has lived without for ten (10) years. I also think this is a valid argument. It would certainly hold a lot of weight in a basic Trademark A vs. Trademark B lawsuit. I therefore do no see how the WIPO panel so quickly dismissed this argument insofar as WIPO arbiters are supposed to consider the relevant law – including laches.
It is cases like these that cause me concern about the future and validity of the UDRP system. All told, it is a weak, relatively ill-reasoned decision.
related materials >> WIPO Decision