THE ICANN CYBERSQUATTING DECISIONS
December 16, 2000 through January 15, 2001
© 2001
M. Scott DonaheyTomlinson Zisko Morosoli & Maser LLP
200 Page Mill Rd.
Second Floor
Palo Alto, CA 94306
Tel.: (650) 3258666
Fax.: (650) 3241808
email:
web site: www.tzmm.com / Christine Watson
Santa Clara University
School of Law
Santa Clara, California
Tel.: (650) 941-5323
Fax: (408) 554-4191
Email: / Julia Wei
Santa Clara University
School of Law
Santa Clara, California
Tel.: (650) 616-6835
Fax: (650) 616-6510
Email:
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MIL2087.doc
Mr. Donahey is a member of the panel of neutrals of the World Intellectual Property Organization, eResolution, and the CPR Institute for Dispute Resolution, three of the four providers currently certified by the Internet Corporation for Assigned Names and Numbers ("ICANN") to hear cases under the Uniform Domain Name Dispute Resolution Policy. Mr. Donahey has served as a panelist in numerous cases, including The World Wrestling Federation v. Bosman, D990001, the first case to be heard under the UDRP.
Christine Watson is a J.D./M.B.A. candidate (2001) at the Santa Clara University School of Law and Leavey School of Business, where she is pursuing the High Tech Law Certificate. Ms. Watson is the Senior Production Editor of the SCU Computer and High Technology Law Journal. She is a member of the SCU Intellectual Property Association, International Law Association, and Start-up Law Group.
Julia Wei is a third-year law student at Santa Clara University School of Law, and is as an editor for their Computer and High Technology Journal. She completed her undergraduate education at the University of California at Berkeley, where she received a B.A. in 1995 with a major in Asian Studies. Prior to attending law school, Ms. Wei worked at Oracle Corporation based in Redwood Shores. Currently, she divides her time between her studies and the legal department at Epinions, Inc. Epinions.com is a Web site for trusted consumer advice, ratings, and reviews offering more than one million consumer reviews and comments, covering over 200,000 products and services.
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MIL2087.doc
It has now been more than a year since the first decision was handed down under the Uniform Domain Name Dispute Resolution Policy ( the "UDRP"). The Policy and procedures have gained general acceptance, as the more than 2000 decisions which have been issued and the almost 600 cases pending attest. The UDRP has been hailed for its speed and its cost effectiveness. While much of the criticism of the UDRP has actually been directed at ICANN, there are several areas concerning which the need for improvement has been noted.
The ability of the complainant to select the provider has been linked in the minds of some critics with the predominance of decisions favoring the complainant, (The complainant currently prevails in 85% of the cases. That percentage includes those cases in which the respondent fails to appear and defend. In this month’s digest, there was no response filed in 66% of the cases.)
The lack of predictability in the process has been repeatedly noted. There exists no appellate procedure which would provide precedent and reconcile conflicting panel decisions. The inconsistency in results may, in part, be due to the lack of a searchable data base. Neither Westlaw, nor Lloyds, nor Lexis has seen fit to establish the kind of searchable data base that exists for judicial decisions.
The conflicting decisions may also be due in part to the size of the fees paid to panelists. Conscientious panel members’ time is compensated at only a small fraction of what the panelists would receive if their time were billed at their regular hourly rates. The UDRP has had the benefit of some of the finest law professors, trademark lawyers, and commercial arbitrators in the world on a virtual pro bono publico basis.
Nevertheless, it is this effort and pride which many members of the Panel take in creating a private system of justice with a public profile that is largely responsible for the public acceptance of the UDRP. Even those panelists who are the foremost critics of ICANN and the UDRP give generously of their time in trying to reach what they believe to be the right result in a given case. I am continuously amazed at the commitment of time, energy, intellect, and emotion that my fellow panelists willingly devote to the process.
Since it has been more than a year since the first decision, I felt it would be appropriate and also of assistance to the panelists to solicit the readers’ views on the Panel decisions that the readers feel are the most significant and those that reflect both the rule and the spirit of the UDRP. I am inviting all readers to email me with the three decisions they feel advance the intent of the UDRP and two or three sentences as to why the readers selected the particular decisions. You may email me at . I very much look forward to hearing from you and in reporting on your selections in the next issue of the digest. This has the added benefit of bringing to the panelists' attention decisions of which they might not be aware.
This month I want to compare two cases which decide very similar fact patterns differently. Both decisions cast a new light on what is meant when one says a domain name is confusingly similar to a mark in which the complainant has rights. Is <casionomonaco.net> or <casinomonaco.com> confusingly similar to CASINO DE MONTECARLO? Yes, both panels agreed. In one case the Complainant prevailed, in the other the Respondent did.
In Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. Javier Llorens, ICANN Case No. D2000-1319, the domain name at issue was <casinomonaco.net>. Complainant holds the monopoly for casino and gaming in the Principality of Monaco and is the owner of the trademark, "Casino de Monte-Carlo." Complainant argued that the domain name was confusingly similar to Complainant’s mark since the terms "Monte Carlo" and "Monaco" were used interchangeably. Since Complainant had a monopoly on gaming in Monaco, Complainant argued that Respondent used the domain name at issue, which linked to an online gambling site, to attract for financial gain, Internet users to the web site, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
Respondent argued that there is a distinction between Monaco and Monte Carlo: the former is a principality and the latter is a city. Respondent also argued that the term "casino," being a generic term, should not be considered when determining the main elements of Complainant’s mark.
The Panel was of the opinion that "the substitution of the term of the trademark ‘Monte-Carlo’ by the term ‘Monaco’ in the Domain Name ‘casinomonaco.net’, does not suppress this strong similarity between the two terms, as it is very common to use one or the other term indifferently to designate the Principaute and thus, are synonyms." "The Panel, applying its judicial knowledge, is of the opinion that even though Monaco is the Principaute and Monte-Carlo is the city within this Principaute, these terms are used interchangeably by the public at large. The words (‘monaco’ and ‘casino’) used together create a strong similarity and impression that could easily induce the general public into believing that the Domain Name, the Domain Name proprietor, and any web site operated from the Domain Name are associated with the Complainant."
The Panel went on to find that Respondent had failed to establish any rights or legitimate interests in respect of the domain name. Finally, the Panel found that the Respondent attempted to appropriate the good will of the Complainant and to confuse Internet users and to redirect traffic intended for Respondent to Complainant’s site. Accordingly, the Panel found for the Complainant and ordered the domain name at issue transferred to the Complainant.
In La Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. Martimi Bt., ICANN Case No. D2000-1318, the domain name <casino-monaco.com> was at issue. The facts regarding Complainant’s interest in the trademark and its monopoly were identical to the previous case. In this case, however, the Respondent had registered several domain names combining the word "casino" and the name of a country, connected by a hyphen, and attached to a generic Top Level Domain (gTLD).
The Panelist found that "it cannot be excluded that a conceptual similarity would be deemed to exist between the domain name and the trademark." The Panelist however found that there was no proof of bad faith registration and use. "Respondent proceeded to register a considerable number of domain names, by combining the word ‘casino’ with the name of a country. The Panel finds that this pattern of conduct in registering the domain names shows that Respondent registered the Domain Name independently of Complainant’s trademark. In fact there is no evidence that Respondent [an Hungarian] knew of Complainant, of Complainant’s trademark or of Complainant’s exclusive rights on providing gambling services in the Princedom of Monaco." The Panel therefore found for the Respondent.
The following are the digested cases:
1705. Shop TV, Inc. v. Mind Ta2, Inc., No. FA0011000096124
a. Date: December 15, 2000
b. Panelist(s): Robert R. Merhige, Jr.
c. Domain Name(s) at Issue: <shoptv.com>
d. Response?: Yes
e. Principle(s): None
f. Result: Name transfer
g. Policy cited: 4(a), 4(a)(i)
h. Uniform Rules cited: None
i. Panel Decisions cited: Vertical Solutions Management, Inc. v. WebNet-Marketing, Inc., Case No. FA 95095; NetLearning, Inc. v. Dan Parisi, Case No. FA 95471; Ziegenfelder Co. v. VMH Enterprises, Inc., Case No. D2000-0039; M&T Quality Restaurant Supply v. Your Name Here, Case No. FA 95416.
j. Judicial decisions and statutes cited: None
1706. Palace Sports & Entertainment v. Crystal Whitaker, No. FA0011000096013
a. Date: December 20, 2000
b. Panelist(s): Ralph Yachnin
c. Domain Name(s) at Issue: <thepalaceofauburnhills.com>
d. Response?: No
e. Principle(s):
1) “Respondent’s failure to show evidence sufficient to refute Complainant’s allegations, entitles the Panel to conclude that Respondent has no such rights or legitimate interests in regard to the domain name at issue.”
f. Result: Name transfer
g. Policy cited: 4(a), 4(a)(i), 4(b)(i), 4(c)(i)-(iii)
h. Uniform Rules cited: None
i. Panel Decisions cited: Blue Sky Software Corp. v. Digital Sierra Inc., Case No. D2000-0165; Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, Case No. AF-0336; Dynojet Research, Inc. v. Norman, Case No. AF-0316; Cream Pie Club v. Brittany Halford, Case No. FA 95235.
j. Judicial decisions and statutes cited: None
1707. J-B Weld Company v. Ed Justice Jr. d/b/a Justice Brothers,
No. FA0011000095962
a. Date: December 15, 2000
b. Panelist(s): James P. Buchele
c. Domain Name(s) at Issue: <jbweld.org, jbweld.com>
d. Response?: No
e. Principle(s):
1) Merely removing a hyphen from Complainant’s mark to form Respondent’s domain name does not preclude a finding of identity or confusing similarity.
2) “Respondent’s failure to show evidence sufficient to refute Complainant’s assertions entitles the Panel to conclude that Respondent has no such rights or legitimate interests in regard to the domain names in question.”
f. Result: Name transfer
g. Policy cited: 4(a), 4(a)(i), 4(b)(iii), 4(b)(iv), 4(c)(i)-(iii)
h. Uniform Rules cited: None
i. Panel Decisions cited: The Ritz-Carlton Hotel Co. v. Club Car Executive Transportation and Dennis Rooney, Case No. D2000-0611; Woolworth’s plc. v. David Anderson, Case No. D2000-1113; Reuters Ltd. v. Global Net 2000, Inc., Case No. D2000-0441; Perot Systems Corporation v. Perot.net, Case No. FA 95312; Kraft Foods (Norway) v. Wide, Case No. D2000-0911; EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., Case No. FA 94385.
j. Judicial decisions and statutes cited: None
1708. Sand Hill Wholesale of Ohio v. Chris Hatton d/b/a Sand Hill Wholesale
Cedar Lod Furniture, No. FA0011000095970
a. Date: December 18, 2000
b. Panelist(s): James A. Carmody
c. Domain Name(s) at Issue: <sandhillwholesale.com, sandhillwholesale.net>
d. Response?: No
e. Principle(s):
1) “Unregistered marks are protected by statutory and common law principles in the same manner as registered marks. The subsequent registration of a long-used, but unregistered mark, does not affect the long-standing rights acquired by that unregistered mark under statutory and common law principles.”
2) “Upon its registration on February 9, 2000, through March 2, 2000, and at least up until March 14, 2000, Respondent listed both the disputed domain names as being “Domain For Sale.” This indicates that the Respondent registered and used the domain name for the purpose of reselling it.”
f. Result: Name transfer
g. Policy cited: 4(a), 4(a)(ii), 4(b)(i), 4(c), 4(c)(i)-(iii)
h. Uniform Rules cited: None
i. Panel Decisions cited: William Hill Organisation Limited v. Seven Oaks Motoring Centre, Case No. D2000-0824; Barney’s, Inc. v. BNY Bulletin Board, Case No. D2000-0059; Microsoft Corp. v. Amit Mehrotra, Case No. D2000-0053.
j. Judicial decisions and statutes cited: None
1709. Calvin Klein, Inc. v. AMG, No. FA0011000095963
a. Date: December 14, 2000
b. Panelist(s): Charles K. McCotter, Jr.
c. Domain Name(s) at Issue: <calvinklein-on-line.com>
d. Response?: Yes
e. Principle(s):
1) “Making demonstrable preparations to use the website before any notice of a dispute is evidence of rights and legitimate interests in the domain name.”
2) Respondent’s registration and use of the domain name in order to prevent trademark or service mark owners from reflecting their marks in corresponding domain names is registration and use in bad faith.
f. Result: Name transfer
g. Policy cited: 4(a), 4(i)
h. Uniform Rules cited: None
i. Panel Decisions cited: Charles Jourdan Holding AG v. AAIM, Case No. D2000-0403; Casual Corner Group, Inc. v. Young, Case No. FA 95112; Hitachi, Ltd. v. Fortune Int’l Dev. Ent., Case No. D2000-0412; Harcourt, Inc. v. Jeff Fadness, Case No. FA 95247; Reuters Ltd. v. Teletrust IPR Ltd., Case No. D2000-0471; Twentieth Century Fox Film Corp. v. Risser, Case No. FA 93761.
j. Judicial decisions and statutes cited: None
1710. Compassion in Action v. Donald McDermott, No. FA0011000095952
a. Date: December 18, 2000
b. Panelist(s): P. Jay Hines