Dan's Domain Site | Conflicts | In Court

Dan's Domain Site

Conflicts: In Court

Despite the existence of the ICANN dispute resolution policy (UDRP -- Uniform Dispute Resolution Procedure) with its arbitration procedure, many domain disputes still wind up in the courts, with all the delays and expenses this entails. The U.S. "cybersquatting" law, which can impose $100,000 statutory damages for trademark infringement by domain name registration, provides a suitable threat for lawyers to wield in their "cease-and-desist" letters.

I don't care if it's your name too... I'm more famous and I want it!

In 2007, country singer Keith Urban sued another person also named Keith Urban, a New Jersey painter and web designer, demanding that he turn over the keithurban.com domain name that he registered first, fair and square. The singer has had to settle for keithurban.net. The other Keith Urban has countersued. More info.

There's been a similar dispute between two people named Don Henley, but although the musician has been rattling sabers for years about the use of don-henley.com by a namesake, it doesn't seem to have actually led to anything being filed in court.

Pandas Body-Slam Wrestlers

People, companies, and organizations sometimes go to court with seemingly outlandish claims -- and sometimes actually win! The World Wildlife Fund, for instance, sued the World Wrestling Federation to try to gain the wwf.com domain name. This would seem to be asinine. While the two groups share the same initials, the wildlife group is nonprofit, and quite properly has its site at wwf.org. The wrestling group is for-profit, and properly had (until 2002) its site at wwf.com. This sort of co-existence, with the same second-level domain in two different top-level domains intended for two different kinds of organizations is precisely how the domain name system was always supposed to function. Why have different top level domains at all if nobody can be tolerated to have the "same" name in a different one? The World Wrestling Federation has been a domain bully themselves, winning ICANN cases against various cybersquatters with domains containing "WWF", but now they found themselves to be the ones at the receiving end.

The wildlife fund won their case in British court, and later won the appeal too (read the decision), prompting the wrestling federation to throw in the towel and change its name to WWE, using the slogan "Get the 'F' out!"

My initial reaction was that "Some WWF wrestler ought to go over there and body-slam the dumb-ass judge!" This, however, proved unfair, because there was a 1994 agreement between the two WWFs to settle an earlier lawsuit, and while this didn't mention the Internet at all (neither side was apparently foresightful enough to see how important that would get over the years), it did require the wrestling people to limit their use of the initials outside the United States -- this leads to the question of whether a Web site, hosted in the U.S. but visible worldwide, violates this, which is a non-obvious question. Within the context of this agreement, the judge's decision is understandable, if still debatable. Really, the biggest "dumb-asses" in this case were the wrestling federation for agreeing to such a restrictive contract in the first place -- if they had pushed the earlier case through to a conclusion, a sane judge would hopefully have ruled that the two groups were in such disparate fields that neither was violating the trademark of the other. But they chickened out and signed a silly and shortsighted agreement, which later came back to haunt them. At any rate, the case in question turns out to be the culmination of years of conflict between the two organizations in many countries over many issues relating to the usage of those initials (since both organizations have produced magazines and clothing with their logos, for instance, they can be in closer proximity than it would seem at first), so it's much more than a simple domain name dispute.

Another article is at The Times (London), and some discussion at kuro5hin.

Incidentally, the wildlife fund didn't end up with the wwf.com domain name after all of that... the newly-renamed WWE merely asked their registrar to cancel the domain registration, throwing that name (and others they owned which contained the problematic initials, some of which they had gained from others via earlier domain disputes) up to the public, first-come, first-served. An alert speculator who noticed its availability grabbed it, and has a wrestling-related site there now. So, can anybody (the wildlife fund or the renamed wrestling federation) sue them?

Fighting Back Against the UDRP

People on the losing end of ICANN decisions can also go to court, and that's what the owner of tonsil.com did after a ridiculous decision forced them to take their tonsils out... er, their tonsil domain, and transfer it to a German company that claims ownership of this common English word. The owner of barcelona.com tried the court route to attempt to overturn the anomolous UDRP decision taking away that domain and handing it to the city of Barcelona (anomolous because almost all other cases involving geographical names have been turned down because the names are intrinsically generic), but a U.S. court ruled that the Spanish trademarks owned by the city are protectible via U.S. anti-cybersquatting law.

On the other hand, if the trademark owner loses its ICANN challenge, it can go to court too, and that's what happened in the ereferee.com case. The ICANN panel ruled that "referee" was too generic to be protected, but the trademark holder went to court and, so far, has receieved a preliminary injunction in its favor.

A court decision was very good for the status of non-trademark-owners who have good-faith reasons to register a domain that happens to coincide with somebody else's trademark. It was the case of James Strickland, who registered strick.com as an abbreviation of his surname (and a nickname he had been known by) after finding that strickland.com was already taken. He used it for his computer consulting company. However, a company named Strick challenged the domain, first under the old InterNic policy (which caused the domain to be placed on hold for years), then under the ICANN policy (where the decision favored the domain owner), and then finally in court. The judge in the case initially seemed to favor the absolute right of trademark owners to bully their way into owning the equivalent domain, but was convinced that this right was not absolute and decided in the domain owner's favor. This decision should be a good precedent for future cases, including the opposition to the claim of trademark owners that all future TLDs need to have sunrise periods to allow trademark owners to have the absolute first claim to their names. See information on this case at strick.com and law.com. Strickland's consulting site is now at tibertech.com.

Another case where a trademark owner went straight to court instead of to the UDRP is the Unicom case. In this case, the domain owner is an individual computer consultant who has been doing business as "Unicom" since 1989 and registered the domain unicom.com in 1990, which is before the World Wide Web even existed. Though the plaintiff, also named Unicom, existed earlier than that, it didn't get around to registering a trademark to its name until 2000, a decade after the domain was registered. That didn't stop them from filing suit under an anti-cybersquatting law that wasn't passed until long after the domain owner started using the name in his bona fide business. This case is still pending.

A case regarding the BancoChile.com domain is not only attempting to overturn that specific UDRP decision (as other cases have), but is trying to have the entire ICANN dispute resolution process declared to be illegal due to its lack of due process.

A Reverse Twist...

In at least one case, somebody who lost in court attempted to use the UDRP to get back, in a reversal of the normal situation. This didn't avail the former owner of suez.net, an Egyptian living in Canada who was using the domain to present tourism information about the Egyptian city of Suez, but was sued in French court by the company that built the Suez Canal and now claims trademark rights over the name (even though the city was there before the canal). This strikes me as a highly unfair case of reverse domain hijacking, but the domain owner apparently lacked the resources to fight back when dragged into court in a foreign country, so he lost; he then filed a UDRP case to try to get the domain back, but the decision went against him on the grounds that court decisions always outrank the UDRP panels.

Links

  • Monster Cable Products sued the registrant of monster.biz, despite the fact that the site in question was using the word "monster" in its generic meaning. They then dismissed the case and apologized, however.
  • sex.com has been in the courts for years... not over a trademark dispute, but because somebody hijacked the domain long ago through a forged transfer request. The original owner eventually got it back after years of fighting in the courts, but is now suing Network Solutions for allowing the hijacking in the first place. See more information in their press page.
  • wdr.org formerly belonged to a German journalist with those initials, but was challenged in court by a German broadcasting company also sharing the initials. It was released by its owner under court order, but the broadcasting company didn't manage to register it; instead, somebody in Switzerland got it and put up a "World Domain Rights" site chronicling domain disputes.
  • TaubmanSucks.com was put up by somebody who's getting sued by the Taubman company, which manages shopping malls, because he earlier put up a "fan site" about a local mall at a domain address based on the mall's name. He says it was a noncommercial site, but both the original site being sued over and the "sucks" protest site are at .com addresses; .org would make more sense to emphasize their noncommerciality. When a judge ordered the "sucks" site shut down, too, somebody (apparently not connected with the original site) put up taubman-sucks.com, with a hyphen. Meanwhile, an appeals court allowed the original "sucks" site to go back online.
  • Domain Wars, Episode I: The Fandom Menace! Fandom, Inc., which had its site at fandom.com, threatened to sue the owner of fandom.tv for trademark infringement. Fans of all sorts were outraged at this, because the term "fandom" has been in use for decades (a dictionary cites it as far back as 1909) for fan communities; it's ridiculous for one company to claim ownership of the term. See a Salon article. A new site, FandomFightsBack.com, was formed to cover this issue and other fandom-related disputes (though my own "purist" tendencies cause me to grumble that such a noncommercial site ought to be a .org rather than a .com...) The case is resolved, however; Fandom, Inc. and the domain owner finally reached an agreement where the domain owner could keep the name, and around that time, Fandom, Inc. went bankrupt, so no more threats are likely from them.
  • Toronto2.com case -- The owners of toronto.com are suing the owners of toronto2.com for trademark infringement, though both names are rather generic derivatives of the name of the city the sites are about. The Toronto2 site is part of a group of Canadian sites with names of cities and provinces followed by "2.com". This group of sites is noncommercial in nature, so I'd say they ought to have used ".org" domains (if not country-code domains in ".ca") rather than .com, and also, such a family of sites would more logically be done as subdomains of one domain instead of separate domains. However, just because they didn't follow my standard of logic doesn't mean that they're violating anybody's rights in a legally actionable way.
  • VintageCocaCola.Com is under threat from the Coca-Cola company for alleged infringement of their trademark.
  • eToys vs. etoy: A group of European artists have had a site at etoy.com since 1995. The much newer, and much-hyped Internet store etoys.com claimed that the earlier site was infringing on their trademark, even though trademark law clearly allows continuation of prior use (and the European artists actually have a pending U.S. trademark application for their name). Some dumb-ass California judge disregarded law and precendent, however, and made a preliminary ruling ordering the art site to shut down (which they did, temporarily, to avoid contempt fines). After a lot of bad publicity for eToys (during which time their stock dropped to one-third of its earlier value), they relented and dropped their suit, allowing etoy to keep its address. Another aspect of this case is the "international-incident" character, in which an American judge claimed jurisdiction over non-Americans simply on the grounds that their domain is under .com, which the judge seems to think is inherently an American domain. That's false; .com is an international top-level domain, available worldwide. Somebody in the case (either the judge or an eToys lawyer; I don't recall) suggested that the artists would be better off with a country-code domain like etoy.ch; well, by that reckoning, eToys should have used etoys.santa-monica.ca.us. Maybe the Europeans should start trade sanctions against the United States to protest this arrogance.
  • NorthernLight vs. NorthernLights: Another similar dispute between a current "big-bucks" site and a site with an "infringing" domain that happens to have been in existence longer than the complaining site. And another dispute where the non-American site owner has been dragged into a U.S. court (Massachusetts this time) despite complete lack of a legally-sensible jurisdiction. The judge in this case, however, isn't being quite as irrational as the California one; his preliminary injunction merely forced the "infringing" site to change its front page to something acceptable to the plaintiff, while (so far) leaving the rest of the site alone.
  • SpaceNews.Org is being sued by Gannett for infringing on their trademark on "Space News", though it's a rather generic name and the site being sued is noncommercial (as implied by the .org ending).
  • GoofOff.Com: The trademark owners of some paint remover called "Goof Off" are in a legal battle (with a suit and countersuit) against the owner of a site about "goofing off" (a phrase found in most dictionaries).
  • WorkingWoman.Com used to host the site of a working woman who lists resources of interest to other working women... but the domain was challenged by the owners of the magazine of the same name. They ultimately reached a settlement, and she moved to workingwomen.com, giving the former domain to the magazine.
  • Compassion.Com Dispute -- A charitable organization had the domain compassion.com, but another charity claimed to have a trademark on the word "compassion" and tried to bully NSI into suspending the domain. The domain name holder sued the trademark holder, asking for cancellation of the trademark, court costs and punitive damages due to their "coercive" tactics. The trademark holder countersued, asking for court costs, treble damages for trademark infringement, and punitive damages. Not a heck of a lot of compassion seemed evident on any side of this battle. Finally, some sort of (undisclosed) resolution was reached as the case was settled and none of the web sites describing it are up any more.
  • Prince.com Dispute -- A British company has that domain, but the American maker of tennis racquets is trying to grab it from them. The British Prince (the company, not Prince Charles!) successfully sued the American Prince (the company, not the Artist Formerly Known As...) under a British law against the making of unjustified trademark infringement threats. There doesn't seem to be any active site under prince.com any more, just a hosting provider's parking page.
  • Porsche v. NSI -- The first suit by a trademark owner against NSI since its 1995 policy went into effect supposedly to stop such suits. In this case, Porsche (the car-maker) is unsatisfied with InterNic's action of simply suspending the porsche.com domain; it wants to use that domain itself, and so it's suing to demand it be turned over to them.

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This page was first created 14 Mar 2001, and was last modified 08 Apr 2007.
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