Re: [ga-udrp] FW: Non-member submission from ["Rothnie, Warwick" <WarwickA.Rothnie@msj.com.au>]

["NameCritic" <watch-dog@inreach.com>]

http://istweb.syr.edu/~mueller/study.html

The cases involved with this study. http://istweb.syr.edu/~mueller/list.html

"The fact that negotiations between the parties for the sale of the domain
name have occurred does not necessarily prove that the original registration
was made primarily for the purpose of selling to the complainant. The Policy
does not impose a blanket prohibition on selling domain names." David
Williams, QC, Panelist in SOUTHBANK v. Media Street, WIPO Case No.
D2001-0294 (Apr. 11, 2001), para. 6.15; quoting from Gordon Sumner, p/k/a
Sting v. Michael Urvan, WIPO Case No. D2000-0596 (July 24, 2000).

*Yet in another case. "Respondent's comments to Complainant in an e-mail
"not to contact him with an offer for the domain name . . . unless the offer
reflects appropriate market value" was taken to suggest bad faith.  Transfer
ordered."


*And just to show that the UDRP is not uniform in any way.
http://www.arbforum.com/domains/decisions/97182.htm

BroadcastAmerica.com, Inc. v. Cynthia Quo, WIPO Case No. DTV2000-0001 (Oct.
4, 2000).  First UDRP case decided for the .tv TLD.  Complainant was an
Internet broadcast service operating BroadcastAmerica.com.  The complainant
did not have a trademark registered with the USPTO.  First Respondent
contacted Complainant with offer to sell for $1500, after cease & desist
letter sent, Respondent stated the name would be placed up for auction at
$20,000. Name was later sold to second respondent for $500.
Panel determined that "Complainant presented substantial evidence that it
has acquired common law service mark rights in 'BroadcastAmerica.com' . . .
based on a comparison of the overall impression that 'BroadcastAmerica.TV'
as a domain name and 'BroadcastAmerica.com' as a service mark (and domain
name) are likely to make on users of the Internet, the Panel determines that
the domain name 'BroadcastAmerica.tv' is confusingly similar."

*So now if you own a dot com I guess you are entitled to that name under all
future TLDs.

Modern Times Group (MTG) AB v. Stefan Häge, Kriströms Advokatbyrå AB, WIPO
Case No. DTV2000-0004 (Jan. 24, 2001).  Complainant had several European and
Scandinavian trademarks for EVERYDAY, had been used with the Internet since
1994 and a portal since 1999.  Complainant sent a cease and desist, and
originial registrant assigned the name to the respondent the next day.  The
Panel stated that "The ccTLD.tv is, by its nature, natural to use all over
the world. For many Internet users it would seem to be a gtld. It is
therefore important that MTG can use this domain as well, especially in
order to avoid confusion amongst Everyday.com's one million members."
Transfer ordered.

*Again look out dot biz registrants. I have a lot of dot coms up as
websites. I guess the matching dot biz names automatically belong to me too.

*Now we go back the other way.

Toronto Star Newspapers Ltd. v. Elad Cohen, WIPO Case No. DTV2000-0006 (Jan.
22, 2001).  Complainant has operated a Canadian cable channel TSTV (Toronto
Star Television) since 1998.  Complainant began to webcast TSTV at TSTV.ca
and TorontoStar.com in 2000.  Respondent registered TSTV.tv to offer
"services to the transsexual and transvestite community."  Although TSTV and
TSTV.tv were identical, the Panel found that the respondent had legitimate
use of the domain name in connection with services for the transvestite
community.

*And in a different case . . .

Toronto Star Newspapers Limited v. Capital Networks Limited, DTV2001-0002
(Mar. 21, 2001).  Toronto Star filed complaint on January 22, 2001, for the
domain name TorontoStar.tv.  Complainant sent a cease and desist on October
26, 2000.  Respondent claimed to be a media enterprise, focusing on North
American city names with the word "star" attached.  No examples of other
city name domains were provided.  The domain name was found to be identical
to the Complainant's mark.
The Panel declined to resolve the dispute, saying "[i]t may be that the
subject domain name violates the intellectual property rights of the
Complainant, but that is not a matter to be resolved in this domain name
dispute process. The focus of this proceeding is narrow and specific."
Further, "[t]he Respondent's evidence is not strong, but the Complaint has
the burden of establishing a lack of legitimate interest. This, it has not
done."

Again, Toronto Star failed to win a UDRP proceeding.  *This decision may
have arrived at a different result had it been filed with the NAF or a
different Panel.  It is also unclear whether Complainant's counsel erred
with both UDRP cases.  Respondent wins.

eMedicine.com v. Sjafy Lim, WIPO Case No. DTV2001-0003 (Apr. 5, 2001).
Complainant began using EMEDICINE trademark in 1997, and obtained US
trademark registrations in 1998 and 2000.  Respondent was an accountant in
California and claimed to have registered eMedicine.tv for her husband's
medical clinic.  In September 2000, Complainant wrote to Respondent,
offering $200 for the domain name.  Respondent replied that the name was for
her husband's clinic, but offered $11,000 for the domain name.  The case
turns on the issue of bad faith.  The name was found to be identical, and
Respondent's lack of use for a bona fine offering of services did not
support rights or legitimate interest in the domain.  The same evidence
denied by the Panel in showing a legitimate interest was used to show that
the name had not been registered in bad faith.
"There is no evidence here that Respondent has engaged in a pattern of
speculative domain name registration or that her claimed reason for
registering the mark is a sham. The parties do not appear to be competitors.
Further, it does not appear that Respondent deliberately selected the Domain
Name to attract Internet users to its site based on confusion with
Complainant's mark. Indeed, there is no evidence in the record to show any
public use or awareness of Complainant's mark, and it is in any event
unlikely that Respondent would reap any benefit from misleading
Complainant's potential customers to a web site for a geographically remote
medical clinic."

Bad faith could have been found based on the Respondent's offer of $11,000
for the domain name.  However, the Panel found that "the mere fact that a
party offers to sell a Domain Name for a premium is not conclusive proof of
bad faith. The specific circumstances of the offer must be considered."
Further, "[g]iven that Respondent demonstrated a bona fide intent to use the
Domain Name for a legitimate, non-infringing purpose, I find that his offer
to surrender his rights in the domain name for a premium does not establish
bad faith use and registration."  Complaint denied.

*If the Panel determined that the Respondent had demonstrated a "legitimate,
non-infringing purpose", then why does this not show rights or legitimate
interest under Paragraph 4(a)(ii)?  I am confused by the reasoning applied
by the panel but not the result.  The panel should have stated that the
Respondent had a legitimate interest to the name.

Bloomberg L.P. v. Martin Aronsky, NAF Case FA96681 (Apr. 11, 2001).
Complainant discovered Bloombergradio.tv and TheBloomberg.tv for sale on
Afternic.com.  A cease and desist was sent to Afternic.  Respondent was
offering for sale domain names with the famous marks of others.  Respondent
claimed that "just acquiring a domain name for re-selling does not
consititute bad faith", and Complainant's offer of $1000 for transfer of the
domain name "concedes that there is an open trade value to the name."
As to the first issue, whether the domain names were identical or
confusingly similar, the Panel found the "addition of an ordinary
descriptive word or letters such as "tv" to a famous mark does not make the
domain name dissimilar."  The only use shown by the Respondent was to offer
the names for sale on Afternic.  "It is obvious that Respondent is trying to
sell the domain names to anyone who will buy them so no non-commercial use
theory can be considered."  Complainant's marks had not become generic, and
Respondent was not commonly known by he domain names.  Panel found no rights
or legitimate interests in the domain names.

In determining the third element of the UDRP, the Panel found "[o]ffering
domain names for sale at an auction site is evidence of bad faith
registration and use.  See Wrenchead.com, Inc. v. Hammersla, WIPO Case No.
D2000-1222 (Dec. 12, 2000) that was also an "Afternic.com" auction sale.
See also Gateway, Inc. v. David Ayers, WIPO Case No. D2000-0106 (Apr. 27,
2000), Chase Manhattan Corp. v. Jehovah Technologies PTE Ltd., WIPO Case No.
D2000-0388 (July 5, 2000)."  The domain names were available under the
"Financial Services and Communications" section, and it was clear that the
Respondent knew of the Complainant's rights in the BLOOMBERG mark and was
attempting to profit from it.  Transfer ordered.

*Landmark case.  It remains to be seen on how many trademark holders will
look to this decision in future cases.  However, with the number of domain
names containing famous marks available on auction sites, this case should
prove to be very helpful for trademark holders.

*It will be interesting to see how many complaints are filed with WIPO and
the National Arbitration Forum over .tv domain names.  So far, NAF decisions
have resulted in clear wins in favor of trademark holders.  Consider the
names at issue in those cases: Best Western, Bloomberg, Enron, Hollywood
Network, and Premiere.  Four or five of those marks are recognizable as
famous or well-known.  Of the WIPO decisions, arguably NASDAQ and Clairol
are the only famous marks of the group.  Trademark holders should weigh
carefully the decision to file a UDRP case.  The particular arbitration
forum used should also be a factor.  It may appear that the NAF has been the
more favorable forum, but perhaps the cases brought before the NAF have been
reasonably clear examples of bad faith registration.  Five cases are still
pending before WIPO arbitrators, and those cases could arrive at different
results.  Hopefully this summary will assist with both sides of the UDRP
issue.

COMSAT Corporation v. TELE Satellite, WIPO Case No. DTV2001-0011 (June 7,
2001).  Complainant filed the UDRP proceeding April 12, 2001 against German
Respondent TELE Satellite over the domain name COMSAT.TV.  No response was
filed by TELE Satellite.  COMSAT (Communications Satellite Corporation) was
created by Congressional statute in 1962 to "design, develop, and implement
a worldwide satellite telecommunications system."  The COMSAT trademark was
registered in 1964, and the Panelist considered the mark to be famous in the
field of satellite communications.  COMSAT.TV was registered by the
Respondent July 10, 2000, with content resolving to sat-news.com.  Panelist
Dan Hunter stated "Respondent is using COMSAT.TV solely to lure those who
are looking for Complainant to its site when a person types in Complainant's
mark and name.  This use is in bad faith, and it is an attempt to trade off
the enormous goodwill and fame attendant the COMSAT mark in the satellite
field."

*Yet in the case of BruceSpringsteen.com that Bruce didn't get his domain
name because the Respondant was using the name to point to a celebrity
website. Very Uniform of them don't you think?

* It's pretty much a given that the UDRP will NOT be internationally
recognized no matter how much ICANN and WIPO contend they are the One True
Authorities in their respective services.
http://www.udrplaw.net/cctldDisputes.htm

* And if you agree with this decision there is no help for you at all. The
word Traditions is a generic word. No website is not a TM infringement.
http://www.arbforum.com/domains/decisions/94388.htm

* Particularly interesting quote here by the Panelist "In seeking to resolve
the conflicting interpretations which have been offered for Mr. McDiffett's
behaviour, certain factors must be kept in mind. There is no obligation on a
domain name registrant to use it for any purpose, commercial or otherwise.
Nor in general is there any obligation not to transfer it to any other
person for a sum exceeding the costs of obtaining and maintaining it. If
this is what the Complainant means by "trafficking" its objection is too
wide" http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0193.html

*And I find it difficult to see how a company can feature the website in
their magazine more than once then 4 years later decide the domain name was
infringing on their rights.
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0222.html

*AOL wins again. They seem to own the letters ICQ no matter what. You don't
have to use them in commerce in competition with them or anything. They just
simply get to reduce our alphabet by three letters even if you increase the
string to a 4th or 5th or 6th letter. I could start a website with MICQ.com
as "More Internet Cash Quickly" but AOL would get the domain name because
anything ICQ is an infringement.
http://www.arbforum.com/domains/decisions/94420.htm

*This is a book of the bible. That any entity would be granted a TM on a
name they stole from the bible is first of all ridiculous. Secondly this
case goes to show how much weight is placed on other unrelated domain names
someone owns. That should not even be considered let alone be evidence of
anything at all.  Also again Arbitrators can't make up their mind about
whether or not trying to sell a domain name is evidence of bad faith.

I can get you plenty more. J. Crew vs Crew.com is good. A company in
California that got a TM for Beverages & More! but only because of the
ampersand and the exclamation point. They could not get a TM without them
because the words are descriptive and generic, therefore the TM was only
exactly as you see written here. Yet they won the domain name
BeveragesAndMore.com. Their argument was that although the ampersand and
exclamation point were how they got their TM, that since the punctuation
marks were not usable in domain names that this domain name should belong to
them. Yes Barcelona .com. Madonna.com. Maybe Nissan.com.

It can go on and on. The bottom line is that there has been NO uniformity in
the Uniform Dispute resolution Policy at all. By allowing TM Holders to shop
for the best forum to decide the case and the fact that Arbitration Services
must be friendly to TM Holders to attract business, there is no possible way
this can be construed as a fair process. We cannot document the number of
domain names that have been given up and transferrred due to the letters IP
Lawyers send out regularly to threaten people. They do it simply to see if
they will give up the name. They threaten huge lawsuits and indicate huge
legal defense expenditures, etc. There is no defense for this for
individuals and smaller companies.

Many IP Interests came to the party late. Thanks to the UDRP, WIPO, ACPA,
and ICANN they can just steal what they did not have the foresight to get
first. Critics can say all they want that this is a fair system, but they
know it is not. IP Lawyers don't get paid as well to defend domain name
owners in general as they do for stealing domain names for large
corporations. Many law websites give the advice freely. How to get someone
to give you the domain name your client wants is basically the message.


With all the IP interests involved in ICANN, it's no wonder an Individual's
Constituency and a Domain Name Owner's Constituency is not approved. They
say it is unnecessary. It's more that they want to continue with this
travesty called the UDRP and don't want a bunch of "ordinary" people
objecting to what they consider their right. Domain Names were not intended
to match up to TMs. If they were the USPTO would be registering domain
names.


Chris McElroy aka NameCritic

----- Original Message -----
From: "Rothnie, Warwick" <Warwick.Rothnie@msj.com.au>
To: "NameCritic" <watch-dog@inreach.com>
Cc: <ga-udrp@dnso.org>
Sent: Tuesday, July 03, 2001 11:38 PM
Subject: RE: [ga-udrp] FW: Non-member submission from ["Rothnie, Warwick"
<WarwickA.Rothnie@msj.com.au>]


> Mallesons Stephen Jaques
> Confidential communication
>
> Apparently, there is a duck in your questions but it seems to be a verb
> and not a noun: no attempt to identify particular cases or what
> proportion the disputed cases make up of the whole.
>
> Warwick A Rothnie
> Partner
> Mallesons Stephen Jaques Melbourne
> Direct line (61 3) 9643 4254
> Fax (61 3) 9643 5999
>
>
> -----Original Message-----
> From: NameCritic [mailto:watch-dog@inreach.com]
> Sent: Wednesday, 4 July 2001 4:06 PM
> To: Rothnie, Warwick
> Cc: ga-udrp@dnso.org
> Subject: Re: [ga-udrp] FW: Non-member submission from ["Rothnie,
> Warwick" <WarwickA.Rothnie@msj.com.au>]
>
>
> I see that you missed some of the points made below. By rereading the
> post
> in it's entirety I think you may have more to respond to since you
> stated
> that  "you could hardly claim that meritorious registrants are being
> shut
> out of the legal system."
>
> Specific points to clarify;
>
> 1. If an Arbitration Service is allowing filings beyond those specified
> by
> the UDRP and WIPO's Guidelines for an additional fee from Complainants,
> is
> that an even system?
>
> 2. If the Complainant is allowed to Forum Shop, is that a fair system?
>
> 3. If the system allows for harassing complaints where Company A with a
> great legal staff and a lot of bucks wants a domain name that Company or
> Individual B has and files UDRP Actions and/or Lawsuits knowing that the
> Respondant does not have enough money to defend the Domain Name, is that
> a
> fair system?
>
> 4. Do you believe under a "Fair" Arbitration system that 84% of cases
> being
> found for the Complainant is normal?
>
> 5. How can Person A. infringe upon Comapny B's TM if the domain name has
> never been used in commerce?
>
> 6. Why has the Arbitration Services declared dilution as the reason for
> infringement for Non-Famous TMs?
>
> 7. Why is the fact the Respondant hasn't built a website yet considered
> proof of a bad faith registration? Where, when filing a domain name does
> it
> say the Registrant must EVER build a website in order to keep their
> domain
> name?
>
> 8. Why has the fact that a Respondant doesn't own a business of the same
> name as his domain name been shown as proof of a bad faith registration?
> Again where in the agreement with the Registrar does it say you must own
> ANY
> company to register a domain name? (Besides in the duplicate and
> infringing
> Neulevel dot biz tld)
>
> 9. Can you point me to the place within the law of ANY country or within
> the
> USPTO where it states that a TM Holder has the rights to all uses of the
> words or letter strings they registered regardless of what
> classification
> they registered the TM in?
>
> 10. Can you point to any similar links to statements that give a TM
> Holder
> rights to all variations of the string they hold a TM over?
>
> 11. Can you show me where in the UDRP it says that a Registrar can strip
> a
> Respondant of their domain name and give it to a Complainant without the
> Arbitration ever occuring at all?
>
> 12. Can you show me where in IP Law or the UDRP that pointing a domain
> name
> to a porn website is proof of no legitimate interest in the domain name?
>
> I am sure that it was my mistake you didn't recognize the duck. It is my
> sincere hope that numbering the ducks will help.
>
>
> Chris McElroy aka NameCritic
>
> ----- Original Message -----
> From: "Rothnie, Warwick" <Warwick.Rothnie@msj.com.au>
> To: "NameCritic" <watch-dog@inreach.com>
> Cc: <ga-udrp@dnso.org>
> Sent: Tuesday, July 03, 2001 9:54 PM
> Subject: RE: [ga-udrp] FW: Non-member submission from ["Rothnie,
> Warwick"
> <WarwickA.Rothnie@msj.com.au>]
>
>
> > Mallesons Stephen Jaques
> > Confidential communication
> >
> > The person currently identifying himself as NameCritic said:
> >
> > >Yes I CAN say Registrants arew being denied equal legal
> representation
> > and
> > >treatment. To not see that is to bury your head in the sand. All one
> > has to
> > >do is read the cases and how they were decided and the summaries and
> > >conclusions to see that TM Protection is seriously stretched into
> > something
> > >much more than the courts have allowed in the past and way beyond the
> > >protection the USPTO gives to them.
> >
> > Which cases are you specifically concerned about and what proportion
> of
> > the decisions do they constitute?  For example, there are frequent
> > references by critics of the UDRP to the end of the world aka as
> > barcelona.com, but things would seem to have moved along quite a long
> > way in brisbanecity.com and brisbane.com.
> >
> > Does this stretching "into much more" take into account what the
> courts
> > in the USA have been doing under the anti-cybersquatting protection
> act
> > or is that, for some reason I have missed, not a "legitimate" law in
> the
> > USA?
> >
> > In short what is it that is quacking that you can hear?
> >
> >
> > Warwick A Rothnie
> > Partner
> > Mallesons Stephen Jaques Melbourne
> > Direct line (61 3) 9643 4254
> > Fax (61 3) 9643 5999
> >
> >
> >
> > TMs have classifications. Domain names do not. A TM does NOT give
> > someone
> > all rights to a particular string of letters. It only protects that
> > string
> > in it's use in commerce in the classification for which it was filed.
> > UDRP
> > actions have consistantly ignored this fact and stolen domain names
> from
> > Registrants. Yes I said stolen. I don't beat around the bush. If it
> > looks
> > like a duck and walks like a duck . . .
> >
> > Domain Names are taken that HAVE NOT been used in commerce at all and
> > TMs
> > have been given victories based on dilution of a famous mark when the
> > marks
> > would never be considered famous in a court of law.
> >
> > Respondants have been turned down for court appeals of the UDRP
> > decisions in
> > some cases while I have never heard of the same happening to a
> > Complainant.
> > I am already looking an example so don't bother asking. When I find it
> > I'll
> > post it. There was one in recent news so it shouldn't be difficult to
> > find.
> >
> > In one of the Arbitration Services I have heard they will, for and
> extra
> > $250 accept additional filings from a Complainant after both sides
> have
> > been
> > heard.
> >
> > The Complainant can Forum Shop. There is NO appeals process. There is
> no
> > committee to oversee the actions of the arbitrators. 84% Victory rate
> > for
> > Complainants overall. Using NO use of a domain name as Bad Faith and
> > finding
> > that a TM was infringed upon. With NO commercial use. Give me a break
> > here.
> >
> > Spin on my good man.
> >
> > Chris McElroy aka NameCritic
> >
> > ----- Original Message -----
> > From: "Rothnie, Warwick" <Warwick.Rothnie@msj.com.au>
> > To: <ga-udrp@dnso.org>
> > Sent: Tuesday, July 03, 2001 4:40 PM
> > Subject: [ga-udrp] FW: Non-member submission from ["Rothnie, Warwick"
> > <WarwickA.Rothnie@msj.com.au>]
> >
> >
> > > Mallesons Stephen Jaques
> > > Confidential communication
> > >
> > > Erik Dierker said:
> > > >
> > > > > > > I for one like existing laws
> > > > > > >and would like to see them enforced and if an UDRP did this I
> > > would
> > > > be
> > > > > > all for
> > > > > > >it, otherwise it looks like a mechanism for circumvention of
> > > > Sovereign
> > > > > > and
> > > > > > >legitmate laws.
> > > > > >
> > > > > > Since the UDRP expressly contemplates parties pursuing their
> > > rights
> > > > on
> > > > > > the courts, however, courts will not consider that the
> > sovereignty
> > > > of
> > > > > > the laws has been circumvented.  That is the point of allowing
> > > > parties
> > > > > > to resort to the courts.  Many arbitration agreements, which
> are
> > > > upheld
> > > > > > by the courts, go even further than the UDRP and preclude
> court
> > > > action
> > > > > > over factual findings.
> > > > > >
> > > > > > Warwick A Rothnie
> > > > > > Partner
> > > > > > Mallesons Stephen Jaques Melbourne
> > > > > > Direct line (61 3) 9643 4254
> > > > > > Fax (61 3) 9643 5999
> > > > > >
> > > > >
> > > >
> > > > >I am sorry to have confused you but I think we are talking apples
> > and
> > > > oranges
> > > > >here.  If I sign a valid arbitration agreement with you and it
> > states
> > > > that the
> > > > >exixting Trademark Law will govern on any issue of my right to a
> > name
> > > > as opposed
> > > > >to someone elses, and we arbitrate and the arbitrators missapply
> > that
> > > > existing
> > > > >Trademark Law on a consistent and reliable manner to the benefit
> of
> > > one
> > > > interest
> > > > >group that is in violation of the sovereign laws of the State.
> Add
> > > to
> > > > that
> > > > >Monopoly, add to that adhesion contracts add to that Violations
> of
> > > the
> > > > MOU with
> > > > >the DoC.
> > > >
> > > > >So they have done an end run and circumvented the laws. Notice I
> > used
> > > > the term
> > > > >circumvention and not violation before. But, add all this to
> ICANN
> > > now
> > > > getting
> > > > >into the business of telling countries they have to follow ICANNs
> > > UDRP
> > > > and you
> > > > >have a flat out violation of law as established by treaty.
> > > >
> > > But surely that is just like any arbitrator making a mistake
> (assuming
> > > there be one) and the aggrieved party getting an appropriate court
> to
> > > review and, if necessary, rectify.  The UDRP provides that safety
> > valve
> > > in spades and in the USA (home of plaintiffs' lawyers and
> contingency
> > > fees), you could hardly claim that meritorious registrants are being
> > > shut out of the legal system.
> > >
> > > Warwick A Rothnie
> > > Partner
> > > Mallesons Stephen Jaques Melbourne
> > > Direct line (61 3) 9643 4254
> > > Fax (61 3) 9643 5999
> > >
> > > --
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> > >
> >
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> >
>

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