Domain Name Disputes and ICANN's UDRP

[pwfletcher]

Following up on our previous discussion regarding trademarks and domain names, I thought that you might like to see how a decision on such a domain name dispute reads. This one was handed down today:

http://www.arbitration-forum.com/domains/decisions/196048.htm

Obviously, in my opinion (since the party I was representing won), it was was a just decision in which the domain name owner prevailed against a large company asserting trademark rights. It may offer some insight regarding how to protect yourself if you end up on the receiving end of a cease and desist letter.


Patrick W. Fletcher, Esq.
Fletcher Law Offices
2600 Michelson Drive
17th Floor
Irvine, CA 92612
(949) 723-0111


http://www.internetdisputes.org
http://www.copyrightsolutions.org
http://www.trademarksolutions.org

 

[RJ]

:tu:

Congratulations Patrick on your victory in this case. I would not have anticipated this result for wwwtickets.com v. tickets.com

1. Complainant has not met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain name is confusingly similar to a mark in which Complainant has rights. Policy ¶ 4(a)(i).



2. Complainant has not met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent has no rights or legitimate interest in respect to the domain name. Policy ¶ 4(a)(ii).



3. Complainant has not met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith. Policy ¶ 4(a)(iii).

Not only did you win, but the complainant went 0 for 3! :o

 

[GeorgeK]

Typos of generic terms are fine -- lots of precedents for that (although a few have gone the other way, especially if the respondent does not make their case).

 

[pwfletcher]

I agree. However, although the term tickets.com is generic as used here in the US, the problem in this case was that they have valid trademarks for the term in several other countries. The UDRP does not require US trademark rights to recover a domain name and does not always apply US trademark law.

That is the problem with the UDRP ... it is creating its own body of common law that is directly affecting the intellectual property rights of people and companies domiciled and doing busines in the United States. But that is a rant for another day

 

[Dave_Z]

Hi Mr. Fletcher.

First off, congrats on your victory! And thanks for the link. That'll certainly provide some insights.

I have a question about a dispute my friend is currently in. Chances are, it'll end up in court.

His domain's w/ netsol. And the domain is registered & paid by cc by a person whom my friend had a falling out. My friend reimbursed him prior to that falling out, though.

My friend asked netsol (where the domain is) for help & was told to seek legal counsel since the domain's under that person's name & can't touch it, despite my friend having a trademark to it.

What interested me is this email my friend got from them:

"On November 1, 1999, a three-judge panel of the U.S. Court of Appeals for the Ninth-Circuit ruled that Network Solutions has no responsibility or duty to police the rights of trademark owners concerning domain names.

If the domain owner in question is conducting criminal activity we would ask you to defer to either the police or the proper authorities."

I take it there is such a ruling? Is that ruling currently valid given the change in times?

Based on that link you gave, it seems netsol didn't get involved at all & practically offered little help to your client. I won't be surprised if the same thing applies to my friend.

Another Q: from your experience, has there EVER been a registrar that went out of its way to help out on a dispute like this? I doubt it for trademark disputes, though....

Have you ever helped a person in a domain ownership dispute, by the way, where there were no trademarks involved?

Sorry for the barrage of questions. Just thought of asking.

Thanks for the link, again!