Football clubs kick off together

A number of England's top football clubs have combined in order to win a ground-breaking domain name dispute at the World Intellectual Property Organisation (WIPO).

Fulham, Liverpool, Manchester United, Tottenham Hotspur and West Ham joined forces to make a claim under the Uniform Domain Name Dispute Resolution Policy. The WIPO panel stated that "little (if any) substantive consideration has previously been given by a UDRP panel concerning the circumstances in which it might be appropriate to permit a consolidated complaint involving multiple complainants and multiple domain names against a single domain name registrant". The panel considered an earlier ruling: "In the National Dial A Word case the panel held that the consolidation of multiple complaints in a single complaint should be permitted if the complainants:
(i) have a common grievance against the respondent; and
(ii) it would be equitable and procedurally efficient to permit the consolidation of complaints,"

It went on: "With regard to the first limb of the test, to establish a common grievance against the respondent the panel in the National Dial A Word case held that multiple complainants must:
(i) have a common legal interest in the trade mark rights on which the complaint is based; or
(ii) be the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion."

The clubs were complaining over various domain names that were linked to websites selling tickets to their football matches for example official-liverpool-tickets.com. This was considered to fall under the second option above i.e. the clubs were the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion.

"The [football clubs] have established that [Domains By Proxy] has engaged in common conduct which has affected their legal rights in a similar fashion. Indications of such common conduct on the part of the Respondent include:
(i) the fact that the Disputed Domain Names share readily identifiable commonalities. When each of the [football clubs'] trade marks are disregarded for the purposes of comparison, the Disputed Domain Names contain the identical generic terms 'official' and 'tickets';
(ii) the fact that the Disputed Domain Names have all apparently been registered on the same day points to a clear pattern of registration;
(iii) the fact that the Disputed Domain Names apparently all resolve to an identical web site selling unauthorised Premier League tickets points to a clear pattern of use of all the Disputed Domain Names for the same purpose,"

It should be pointed out the Nominet (the body handling disputes over .uk domains) explicitly allows multiple claimants. It seems a sensible step forward for WIPO as cyber squatters etc tend to direct very similar activities at a number of victims and by banding together these victims can make substantial savings as to legal costs.

For more details of domain disputes please see: http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/5147-Cyber-Squatting.htm

Round up!

Well I haven't written anything new for a while and in this time an incredible number of interesting cases / issues have arisen. This post aims to give an overview to, or more likely just link you to other people who have more interesting things to say!

First on the list (a very out-law based list) is the news from WIPO that the number of domain name disputes in the past year have increased by 8%, according to WIPO's director: "Cybersquatting remains a serious issue for trademark holders," shocking news? I think not. It seems likely that with the introduction of new TLD's will only create more problems. I have written about the introduction of these before and without going over the issues again what I will say is that it is simply a money making scheme which will create more expense for businesses in a time when they are trying to cut back.

The next point (and my second favourite of this round up) also comes from out-law and shows quite how far social networking site Twitter has come. A juror in the States (all fools anyway?) made tweets (see IP Freely knows the lingo) regarding the case. The verdict they reached is now being appealed on the basis that the juror was biased, examples of his tweets are as follows:

"Nobody buy Stoam. Its bad mojo and they'll probably cease to Exist, now that their wallet is 12m lighter,"
"I just gave away TWELVE MILLION DOLLARS of somebody else's money"

and best of all is the following, bear in mind that at this stage he had already been found out for his Twittering, so what did he do?........:

"Well, I'm off to see a judge. Hope they don't lock me under the jail, and forget about me for four days,"

Idiot!

Finally from out-law is a tremendous story about yet another idiot. This time someone infringed their own patent! Basically the guy involved went on BBC2 hit show Dragons Den, unlike most contestants (if they're called that) he managed to convince the dragons to invest £150,000 into his business: the Rapstrap. Unfortunately for all involved this muppet had already got a patent for the product 10 years previous when he worked for a different firm, the IPO have confirmed that the Rapstrap "falls within the scope of claims 1 and 5 of the patent," what action is taken remains to be seen.

The ever reliable IPKat features two cases that caught IP Freely's eye: the Google France v. Louis Vuitton Malletier case (C- 236/08) and the Beta Layout case (although for the latter we are awaiting a full translation), I suggest you head over to the feline page to peruse their views.

Also on IP Freely's recent radar is the case of Times Newspapers Limited (Nos 1 and 2) v United Kingdom (Applications Nos 3002/03 and 23676/03), tactfully reported in the Times Law Reports (here) this not surprisingly featured the Times Newspaper.

This week IP Freely has also been fascinated with the ongoing West Ham / Tevez / Sheffield United saga (and you can possibly add to that list Neil Warnock / the players / Ledds United) which seems to become more farcical by the day. Now as I see it surely the damage suffered by Leeds United (and Neil Warnock etc) is too remote? I would though like the views of those more experienced than me on this......anyone?

Whitman loses the plot

eBay's former chief Meg Whitman has lost a WIPO claim for megwhitman2010.com and four other domain names that she claims exploit her fame.

There has been widespread speculation that Meg is planning to run for election as Governor of California in 2010 (hence the 2010 part of the domain name), other domains in dispute are: megwhitmanforgovernor.com and meg2010.com. All of which are currently not working!

The WIPO panel agreed that Meg was internationally famous but that this alone was not enough to prove that the domain's were identical or confusingly similar to a trade mark in which she owns rights. Meg had opted for a single member panel (cheapskate, the 3 member panels have better transfer rates if my memory serves me right!) and that single member said: "Merely having a 'famous' name is not sufficient to establish common law trademark or service mark rights in the name," yeah well um that's pretty obvious but it does get more interesting: "To be entitled to protection under the Policy, however, a personal name must function as a trademark, and for common law trademark rights to exist, the Complainant’s personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source,".

For Meg to be successful her name: "must be used such that a relevant segment of the public comes to recognize her name as a symbol that distinguishes her services from those of similarly situated service providers.".

To put it bluntly she just hasn't: "provided services under the name 'Meg Whitman' as a source-indicator to a segment of the relevant buying public based on her performance as President and CEO of eBay."

You got that? so basically it's no good just being famous, you also have to use that fame if you wan't to rely on it. But then we all knew that didn't we? and we're thinking why is this guy writing about this as it is very basic........

You've got a point.

.tel on sale

Today is the day that .tel domains were made available for trade mark owners, for more details see the earlier post here. Interestingly enough (and despite IP Freely's views on the matter) the Guardian reports that the company behind .tel insist: ".tel should not be seen as yet another attempt to extract cash from brand owners and companies desperate to keep control of their online presence."

Apparently .tel allows domain owners more freedom in how they use the internet: "Instead of having to go out onto the web to get further information, you go to the DNS and every single way I can interact with you or a business is delivered straight back," for more details check out the Guardian article here.

Having a registered trade mark may not neccessarily protect your domain

WIPO have made an interesting decision regarding the use of a trade mark as a domain name even where the rights owner has not authorised the use.

ITT a pressure gauge manufacturer claimed for the 'ITTbarton.com' and other domain names featuring 'ITT'. The owner of the domain's is Douglas Nicoll, his company buys unused pressure gauges from the US government and sells them on.

ITT claimed that the use of their marks as domain names was an infringement of their trade marks (they have over 700 registered marks across the globe) and argued the Mr Nicoll has no rights or legitimate interests in the domain names. But applying the Oki Data Americas case (2001) the panel stated:

"The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a dealer or reseller should be regarded as a 'bona fide offering of goods or services' … if the following conditions are satisfied:

• the respondent must actually be offering the goods or services at issue;
• the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
• the site itself must accurately disclose the respondent’s relationship with the trademark owner;
• and the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name."

ITT argued that this test should be limited to authorised resellers only (which of course Mr Nicoll is not). But the panel said: "The issues of legitimate reseller interests in accurately describing a lawful business, on the one hand, and of potential abuses of trademark, on the other, are similar whether or not there is a contractual relationship between the parties." Concluding that: "the Oki Data criteria are appropriate here to assess the rights or legitimate interests of the unauthorized reseller for purposes of this element of the Policy."

Finally the panel ruled that Mr Nicoll had a legitimate interest in using the ITT mark (using the Oki Data rules) and as such bad faith was not shown.

.tel Rush

It seems that there is yet another domain for all you brand owners to worry about: .tel.

For brand owners new domains are pretty much always bad news, they mean spending more money and more worrying about registering their brand names first. From the 3rd December brand owners have two months to register their domain names before the public at large can get their grubby mitts on them. If the brand owners don't register their domains then there is the worry that cybersquatters might.