law bookstore
Bookstore
cyber law updates
Cyberlaw News
Mishpat Legal Information Discuss law
Discuss Law
updated legal news
Legal News


cyberlaw informer #62

Welcome to the 62nd issue of the Mishpat Cyberlaw Informer - 
Law on the Internet newsletter from http://mishpat.net

This newsletter is sent only to subscribers. If you no longer 
wish to receive the Cyberlaw Informer, follow the unsubscribe 
instructions at the bottom of this newsletter.

--------------------------------------------------------
 
In this issue:

1. Introduction
2. UDRP - Domain Name Disputes: Part III -The Rights
3. The Cyberlaw Reader
4. Cyberlaw Resource Review
5. Computer & Internet Law News and Updates

--------------------------------------------------------

################
1. Introduction
################

I would like to welcome the many new subscribers who joined the Cyberlaw
Informer since the previous issue.


The pace of cyberlaw happenings is extremely fast, its real "Internet
time". 
One of the news items in the previous issue reported MP3.com's strategy
for its final court battle with Universal, claiming Universal's'
copyrights are not valid. Just a few hours later the companies reached a
surprising settlement, and Universal will even buy part of MP3.com. Full
details can be found in the Cyberlaw news section.


This issue's feature article is the third of a five part series about
the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by
ICANN a year ago. The UDRP spells out an arbitration procedure to
resolve domain name disputes between domain holders and trademark
owners.

In the first part we explained what domain names are and why a uniform
dispute resolution mechanism is needed. If you missed that part, it is
available at the online archive:
http://mishpat.net/cyberlaw/archive/cyberlaw60.shtml
In the second part we examined the UDRP procedure - how to file a
complaint and a response, who the arbitrators are, the timetable for
resolving a dispute, etc. If you missed that part, you can find it at:
http://mishpat.net/cyberlaw/archive/cyberlaw61.shtml

In the third part we will explore the core of the UDRP - who should be
assigned the rights for the disputed domain name.


Starting this issue I added a new section titled "The Cyberlaw Reader"
which includes recommendations of cyberlaw related articles available
online.

As usual you will find the cyberlaw news and the resource review
sections at the end of this newsletter. 


You can recommend resources and discuss various cyberlaw topics at the
message boards http://mishpat.net/cgi-bin/bbs/UltraBoard.pl
You can access the message boards directly at the above URL, or click on
the "Discuss Law" icon on the top of every page at http://mishpat.net


I hope you enjoy reading the newsletter. Comments, tips, and articles
are always welcome. Send them to mailto:editor@mishpat.net

The Mishpat Cyberlaw Informer Archive (issues 1-61) is located at:
http://mishpat.net/cyberlaw/archive

Feel free to use any of the material, or forward the newsletter to a
friend. Just don't forget to mention that they can subscribe to the
Cyberlaw Informer by visiting http://CyberlawInformer.com


--------- sponsor message ----------

LuxuryFinder.com

The ultimate luxury  shopping site, featuring the 
most exclusive luxury brands.

Accessories,  jewelry, handbags, travel, gifts, 
from Calvin Klein, Trish McEvoy, Brioni, 
Angela Cummings, Slatkin, Ghurka, Asprey 
& Garrard ...

http://mishpat.net/ads/luxury

--------- sponsor message ----------



######################################################
2. UDRP - Domain Name Disputes: Part III -The Rights
######################################################

In the previous parts we lay the ground to the Internet Corporation for
Assigned Names and Numbers' (ICANN) Uniform Domain Name Dispute
Resolution Policy (UDRP) intended to resolve conflicts between trademark
holders and domain name registrants.. 
In Part I we defined what a domain name is and what the dispute is
about. In Part II we described the procedural aspects of resolving a
domain name dispute. In this article we start analyzing the most
important part of domain name dispute resolution and try to understand
who should be assigned the rights for the domain name


The core of the dispute resolution process is section 4(a) of the UDRP
that states:

"You are required to submit to a mandatory administrative proceeding in
the event that a third party (a "complainant") asserts to the applicable
Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain
name; and
(iii) your domain name has been registered and is being used in bad
faith."

Section 4(a) spells out the three elements ALL of which must be proved
by the claimant before it can win the rights for the disputed name (note
the "and" at the end of sections (i) and (ii)).

This article will examine each of the three elements:



Element #1 - The Mark
=====================

The first element is set out in UDRP section 4(a)(i) and requires that
the disputed name is "Identical or Confusingly Similar" to a mark which
the complainant has rights to.

A complainant can prove ownership of a trademark or service mark by
providing information about trademark registration in any country.

Under the UDRP, unlike the American Anti-Cybersquatting Consumer
Protection Act, the famousness of a trademark is not a relevant
consideration when determining if a domain name causes dilution of the
trademark.
However, some panels stated that the fact that a mark is well-known
(such as Microsoft) or has a strong reputation would be a consideration.
Other panels have disagreed.


In one case the paFrom - Tue Dec 05 18:06:08 2000
X-POP3-Rcpt: didi@mishpat.net
Received: (from didi@localhost)
        by daniel.securebiz.com (8.10.2/8.10.2) id eB5G1fZ05671
        for editor@mishpat.net; Tue, 5 Dec 2000 11:01:41 -0500
Date: Tue, 5 Dec 2000 11:01:41 -0500
X-Authentication-Warning: daniel.securebiz.com: didi set sender to
cyberlaw-request@mishpat.net using -f
X-From_: editor@mishpat.net Tue Dec  5 11:01:35 2000
Received: from rly-mx2.maxis.net.my (rly-mx2.maxis.net.my [202.75.130.118])
        by daniel.securebiz.com (8.10.2/8.10.2) with ESMTP id eB5G1YK05594
        for ; Tue, 5 Dec 2000 11:01:35 -0500
Received: from mail pickup service by rly-mx2.maxis.net.my with Microsoft
SMTPSVC;
         Tue, 5 Dec 2000 23:55:48 +0800
Received: from rly-mx2.maxis.net.my ([202.75.130.118]) by rly-mx2.maxis.net.my
with Microsoft SMTPSVC(5.5.1877.467.46);
         Thu, 30 Nov 2000 11:36:06 +0800
Received: from daniel.securebiz.com (daniel.securebiz.com [209.239.39.146]) by
rly-mx2.maxis.net.my with SMTP (MailShield v1.5); Thu, 30 Nov 2000 11:36:03
-0800
Received: (from didi@localhost)
        by daniel.securebiz.com (8.10.2/8.10.2) id eAU3VAS29344;
        Wed, 29 Nov 2000 22:31:10 -0500
Resent-Date: Wed, 29 Nov 2000 22:31:10 -0500
X-Authentication-Warning: daniel.securebiz.com: didi set sender to
cyberlaw-request@mishpat.net using -f
Old-Date: Thu, 30 Nov 2000 01:56:05 +0200
From: "Yedidya (Didi) Melchior" 
Subject: Cyberlaw Informer #61
To: cyberlaw@mishpat.net
Message-id: <3A259795.F8A561E9@mishpat.net>
MIME-version: 1.0
X-Mailer: Mozilla 4.6 [en] (Win98; I)
Content-type: text/plain; charset=us-ascii
Content-transfer-encoding: 7bit
X-Accept-Language: en,pdf
Resent-Message-ID: <"_WcviC.A.UlC.xgZJ6"@daniel.securebiz.com>
Resent-From: cyberlaw@mishpat.net
X-Mailing-List:  archive/latest/29
X-Loop: cyberlaw@mishpat.net
Precedence: list
Resent-Sender: cyberlaw-request@mishpat.net
X-SMTP-HELO: daniel.securebiz.com
X-SMTP-MAIL-FROM: cyberlaw-request@mishpat.net
X-SMTP-RCPT-TO: decipher23@maxis.net.my
X-SMTP-PEER-INFO: daniel.securebiz.com [209.239.39.146]
X-Diagnostic: Mail coming from a daemon, ignored
X-Diagnostic: Possible loopback problem
X-Envelope-To: cyberlaw
X-Mozilla-Status: 8001
X-Mozilla-Status2: 00000000
X-UIDL: <3A259795.F8A561E9@mishpat.net>

Welcome to the 62nd issue of the Mishpat Cyberlaw Informer - 
Law on the Internet newsletter from http://mishpat.net

This newsletter is sent only to subscribers. If you no longer 
wish to receive the Cyberlaw Informer, follow the unsubscribe 
instructions at the bottom of this newsletter.

--------------------------------------------------------
 
In this issue:

1. Introduction
2. UDRP - Domain Name Disputes: Part III -The Rights
3. The Cyberlaw Reader
4. Cyberlaw Resource Review
5. Computer & Internet Law News and Updates

--------------------------------------------------------

################
1. Introduction
################

I would like to welcome the many new subscribers who joined the Cyberlaw
Informer since the previous issue.


The pace of cyberlaw happenings is extremely fast, its real "Internet
time". 
One of the news items in the previous issue reported MP3.com's strategy
for its final court battle with Universal, claiming Universal's'
copyrights are not valid. Just a few hours later the companies reached a
surprising settlement, and Universal will even buy part of MP3.com. Full
details can be found in the Cyberlaw news section.


This issue's feature article is the third of a five part series about
the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by
ICANN a year ago. The UDRP spells out an arbitration procedure to
resolve domain name disputes between domain holders and trademark
owners.

In the first part we explained what domain names are and why a uniform
dispute resolution mechanism is needed. If you missed that part, it is
available at the online archive:
http://mishpat.net/cyberlaw/archive/cyberlaw60.shtml
In the second part we examined the UDRP procedure - how to file a
complaint and a response, who the arbitrators are, the timetable for
resolving a dispute, etc. If you missed that part, you can find it at:
http://mishpat.net/cyberlaw/archive/cyberlaw61.shtml

In the third part we will explore the core of the UDRP - who should be
assigned the rights for the disputed domain name.


Starting this issue I added a new section titled "The Cyberlaw Reader"
which includes recommendations of cyberlaw related articles available
online.

As usual you will find the cyberlaw news and the resource review
sections at the end of this newsletter. 


You can recommend resources and discuss various cyberlaw topics at the
message boards http://mishpat.net/cgi-bin/bbs/UltraBoard.pl
You can access the message boards directly at the above URL, or click on
the "Discuss Law" icon on the top of every page at http://mishpat.net


I hope you enjoy reading the newsletter. Comments, tips, and articles
are always welcome. Send them to mailto:editor@mishpat.net

The Mishpat Cyberlaw Informer Archive (issues 1-61) is located at:
http://mishpat.net/cyberlaw/archive

Feel free to use any of the material, or forward the newsletter to a
friend. Just don't forget to mention that they can subscribe to the
Cyberlaw Informer by visiting http://CyberlawInformer.com


--------- sponsor message ----------

LuxuryFinder.com

The ultimate luxury  shopping site, featuring the 
most exclusive luxury brands.

Accessories,  jewelry, handbags, travel, gifts, 
from Calvin Klein, Trish McEvoy, Brioni, 
Angela Cummings, Slatkin, Ghurka, Asprey 
& Garrard ...

http://mishpat.net/ads/luxury

--------- sponsor message ----------



######################################################
2. UDRP - Domain Name Disputes: Part III -The Rights
######################################################

In the previous parts we lay the ground to the Internet Corporation for
Assigned Names and Numbers' (ICANN) Uniform Domain Name Dispute
Resolution Policy (UDRP) intended to resolve conflicts between trademark
holders and domain name registrants.. 
In Part I we defined what a domain name is and what the dispute is
about. In Part II we described the procedural aspects of resolving a
domain name dispute. In this article we start analyzing the most
important part of domain name dispute resolution and try to understand
who should be assigned the rights for the domain name


The core of the dispute resolution process is section 4(a) of the UDRP
that states:

"You are required to submit to a mandatory administrative proceeding in
the event that a third party (a "complainant") asserts to the applicable
Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain
name; and
(iii) your domain name has been registered and is being used in bad
faith."

Section 4(a) spells out the three elements ALL of which must be proved
by the claimant before it can win the rights for the disputed name (note
the "and" at the end of sections (i) and (ii)).

This article will examine each of the three elements:



Element #1 - The Mark
=====================

The first element is set out in UDRP section 4(a)(i) and requires that
the disputed name is "Identical or Confusingly Similar" to a mark which
the complainant has rights to.

A complainant can prove ownership of a trademark or service mark by
providing information about trademark registration in any country.

Under the UDRP, unlike the American Anti-Cybersquatting Consumer
Protection Act, the famousness of a trademark is not a relevant
consideration when determining if a domain name causes dilution of the
trademark.
However, some panels stated that the fact that a mark is well-known
(such as Microsoft) or has a strong reputation would be a consideration.
Other panels have disagreed.


In one case the panel ruled that the existence of a web site is not
required to evaluate whether a registered domain name is confusingly
similar to a trademark. This decision seems very reasonable in light of
the fact that the "use" of the domain name is examined as part of the
third element. 
The test is therefor the likelihood that the domain name would cause an
Internet user familiar with the trademark to assume that there was a
connection of some sort between the trademark owner and the domain name.


Most arbitrators presiding over domain disputes involving domain names
with minor differences to the complainant's mark, ruled that the domains
names are confusingly similar. 
Examples of minor differences are adding hyphens (e.g. geo-cities is
similar to the correct geocities); misspelled names (e.g. geosities
instead of geocities); absence of a space (e.g. cocacola compared to
coca cola); and use of  lower case letters (e.g. bbc for the British
Television network BBC).


In many cases, although the differences where major, panels still found
the names to be confusingly similar.

Examples of such cases are:
* Adding a generic term to the trademark (for example adding the word
"girls" to "nokia" to create nokiagirls.com);
* Adding a country name to the trademark (e.g. adding "Norway" to
"yahoo" to create yahoonorway);
* Deleting part of the trademark (e.g. deleting the word "group" from
"Royal Bank Financial Group" to create royalbankfinancial.com).

In some cases, even though the names where similar to the complainant's
trademark, the panel found that it was not "confusingly similar".
An example is a case in which the domain name as a whole was descriptive
of the registrant's business and unlikely to cause confusion with
Complainant's business (the trademark "kittinger" would not be confused
with the domain kittingercollector.com). 



Element #2 - Legitimate Interest
==============================

The second element is set out in UDRP section 4(a)(ii) and requires that
the claimant prove that the registrant has no rights or legitimate
interest in respect of the disputed domain name.

While the burden of proof is on the complainant, section (4)(c) of the
UDRP states that the registrant, in its response to the complaint filed
with dispute resolution service provider, must demonstrate its
"legitimate interests in the domain name".


Section (4)(c) also sets out safe harbors for the registrant, as
follows:

"Any of the following circumstances, in particular but without
limitation, if found by the Panel to be proved based on its evaluation
of all evidence presented, shall demonstrate your rights or legitimate
interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or
demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering
of goods or services; or
(ii) you (as an individual, business, or other organization) have been
commonly known by the domain name, even if you have acquired no
trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue."


The three safe harbors represent alternative legitimate interests. If
the registrant falls within one of the above safe harbors, he has a
legitimate interest in the name. 

Since the claimant must prove all the three elements in section 4(a),
the registrant only has to show that he falls within one of the three
above safe harbors, in order to retain the rights to the disputed domain
name.

It should be noted that the three safe harbors are not the only
legitimate uses, as section 4(c) states "without limitation". That means
that a registrant can show a legitimate interest in other circumstances
too.



Legitimate use #1
-------------------------

According to section 4(c)(i) the registrant must show "use of, or
demonstrable preparations to use, the domain name." 

The phrase "demonstrable preparations" is not defined in the UDRP, and
arbitration panels have interpreted it in different ways.
Some panels focused on capital expenditures dedicated towards plans to
market goods and services, while other panels required only a minimal
showing of preparations.

In several cases panels ruled that a domain name broker that registered
a generic domain name in order to sell it, met the requirement of
preparation to use (in his case use=sale).

Panels ruled that if the domain name was registered before the claimant
filed application for trademark, then the registrant had legitimate
interests in the name.
This is an interesting observation, since it means that any domain
registration that does not infringe on a mark at the time of
registration, is legitimate. To me it seems as confusing registering in
good faith (which is part of the 3rd element) with legitimate use.

However, in one case (wrongly decided for several other reasons),
involving the name eResolution.com, the panel found that even though the
domain was registered before eResolution was formed, the registrant had
no legitimate interest in the name since it had no business plan for it
at the time of registration.


The second factor the registrant has to prove under the first safe
harbor laid out in section 4(c)(i) (along with use or preparation to
use) is that the use (or preparation to use) of the domain name is "in
connection with a bona fide offering of goods or services." 
This requirement is that the domain name itself refers to the goods or
services offered by the web site. 

A good demonstrations of the connection between the domain name and
products are the UDRP claims brought against EAuto L.L.C., a business
that sold autolamps.

EAuto sold its autolamps through the domain eautolamps.com. The
arbitration panel held that adding the letter 'e' preceding to the
product's name is understood as an electronic form of the same product.
Therefore, eautolamps is an internet-based description of a generic
product, and the panel ruled for EAuto.

In a second case EAuto used the domain name eautomotive.com. That panel
upheld EAuto's use of the domain stating that eautomotive.com is
descriptive of a business that sales products related to automotive
goods and services. Since EAuto used the domain to offer web hosting
services to automotive-industry businesses, the panel ruled EAuto has a
legitimate interest in this domain name. 

The third case involved the domain e-auto-parts.com. This time the panel
found no legitimate interest in use of the name, due to the fact that
EAuto does not actually offer auto parts on its site. 


A different type of case involves the sale of the domain names.

In some cases panels ruled that the marketing of generic/descriptive
domain names is a legitimate use. One panel ruled that a domain name
holder who offered to sell craftwork.com did not make its interest
illegitimate.
Another panel ruled that if the registrant had a legitimate interest in
selling descriptive domain names, then offering to sell the domain name
to the claimant after inquiry by the claimant does not make its interest
illegitimate.


However, the mere offering for sale is not a right or legitimate
interest in domain name. A legitimate offer to sale is only if there was
a legitimate right to register.

In a case brought by the Educational Testing Service (ETS) for the right
to the domain toefl.com (an acronym for a well-known standardized test
offered by ETS), the panel ruled that trying to sell the domain to ETS
is not a legitimate interest.

In a controversial (and in my view wrong) case involving the generic
domain crew.com the panel ruled that a domain name speculator has no
legitimate interest in the name. According to the majority ruling in
crew.com, registering domain names without any demonstrable plan for a
specific use of that domain name is not legitimate, since such conduct
precludes others who have a legitimate desire to use the name from doing
so.



Legitimate use #2
-------------------------

Under section 4(c)(ii) a registrant can show legitimate interests in the
domain name if it has been commonly known by the domain name, even if it
had acquired no trademark rights. 


In one case the registrant had been known for years as "Byers Choice."
The company registered both byerschoice.com and buyerschoice.com because
some customers had been confused over its name and thought it was Buyers
instead of Byers. The company claimed that the purpose of the double
registration was to link the two names so that customers who misspelled
the company name would be able to contact the company. 
The trademark holder of "Buyer's Choice" filed a UDRP action over
buyerschoice.com. The panel ruled that the Byers had legitimate interest
in the disputed name.

In another case the panel held that a registrant known as six.net also
has a legitimate interest in sixnet.com



Legitimate use #3
-------------------------

Under section 4(c)(iii), a registrant can show legitimate interest if it
is engaged in "non-commercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert customers or to
tarnish the trademark or service mark at issue." 

This defense is not widely used since most registrants register the
domain seeking commercial gain (by offering products, services or
selling the domain name).

Registering a domain without intent to use (just to prevent the
trademark owner from using it) is not legitimate since section 4(c)(iii)
requires "non-commercial or fair use".




Element #3 - Bad Faith
==========================

Under section 4(a)(iii), the Complainant must prove that the domain name
was BOTH registered in bad faith, and is being used in bad faith. 


Section 4(b) spells out circumstances in which registration should be
considered to be bad faith registration.

Section 4(b) states:

"Evidence of Registration and Use in Bad Faith. For the purposes of
Paragraph 4(a)(iii), the following circumstances, in particular but
without limitation, if found by the Panel to be present, shall be
evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have
acquired the domain name primarily for the purpose of selling, renting,
or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of
your documented out-of-pocket costs directly related to the domain name;
or
(ii) you have registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that you have engaged in a pattern
of such conduct; or
 (iii) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your web site or other
on-line location, by creating a likelihood of confusion with the
complainant's mark as to the source, sponsorship, affiliation, or
endorsement of your web site or location or of a product or service on
your web site or location."


Note that like the safe harbors in section 4(c), the bad faith
circumstances in section 4(b) are alternative circumstances, and the
claimant must only prove one of the alternatives. The four alternatives
is section 4(b) are not the only possible registration and use in bad
faith, a claimant has the option of showing that the registrant acted in
bad faith in a way not specifically set out in section 4(b).

Claimant must prove that both the registration AND the use are in bad
faith. We will elaborate more on what constitutes "use" in Part IV.


Bad Faith #1
-------------------

The WWF decision involved the domain name worldwrestlingfederation.com,
which is identical to the trademark held by the World Wrestling
Federation (WWF). The panel held that an offer to sell the domain name
to the WWF for more than the incidental costs of registration
constituted bad faith registration and bad faith use.


Section 4(a)(iii) requires both "registration" and "use" in bad faith. 

An arbitration panel ruled that offering to sell a domain name to a
domain broker (unlike offering it to the complainant according to
section 4(b)(i)) does not constitute evidence bad faith registration or
use.
However, the panel in that case found bad faith in the fact that the
registrant intended to profit from the value attached to the
complainant's trademark.
This outcome means that registering a distinctive domain name and then
trying to sell it (even by auction and not to the trademark owner) might
be considered bad faith.


Bad Faith #2
-------------------

According to section 4(b)(ii) registrant's intention to prevent a
trademark holder from using its mark is evidence of bad faith, if the
registrant engaged in a pattern of such behavior. 

Panels ruled that the availability to the trademark owner of alternative
domain registration makes UDRP 4(b)(ii) inapplicable, since an
alternative domain name can always be found (adding letter such as e,i,
adding an apostrophe, writing the full name, adding words such as net,
group etc.). 

Registrant's efforts to register more than one of the alternatives has
been held to be evidence of bad faith under section 4(b)(ii), as it is
seen as an attempt to foreclose complainant from using its own
trademarks in a domain name.


Another issue is the intent required under section 4(b)(ii) "to prevent
the owner of the trademark or service mark from reflecting the mark in a
corresponding domain name".
One panel ruled that intent can be shown by the fact that the
registrations prevented the complainant from obtaining the respective
domain name, although no evidence was provided to demonstrate the
registrant' purpose in registering the domain name.

If the registration was prior to the complainant acquiring the
trademark, there can be no intention to prevent complainant from using
the domain name.


Finally, section 4(b)(ii) states that bad faith evidence is shown if the
registrant engaged in a "pattern of conduct".
Some panels ruled that registration of just two domain names can
constitute a pattern of conduct. Other panels found no pattern even with
four domain registrations. So it is unclear whether there is a numerical
standard for "pattern".

Other evidence can also indicate pattern of conduct. One panel ruled
that registration of a .net domain name eight days after complainant's
registration of the respective .com domain name, and doing so repeatedly
is evidence of a pattern of conduct.



Bad Faith #3
-------------------

Section 4(b)(iii) states that evidence of bad faith is registration of
the domain name primarily for the purpose of disrupting the business of
a competitor. 
Panels found such disruption when the registered names comprised of
trademarks and directed users attempting to find official websites
associated with those trademarks to registrant's own website

One panel found intention to disrupt where a former employee registered
a domain name identical to the employer's mark and completely different
from his own newly adopted marks without any plans as to the
exploitation of the domain name.


Bad Faith #4
-------------------

The 4th evidence of "bad faith", stated in section 4(b)(iv), is that
registrant intentionally attempted to attract, for commercial gain,
Internet users to its web site by creating a likelihood of confusion
with the complainant's mark. 

The purpose of "commercial gain" does not require actual gain. Gain can
be expected through any unfair competing conduct that, because it harms
the mark owner, could eventually produce some gain to registrant.

Advertising or linking to the mark owner's competitors on a website has
been regarded as evidence of use of domain name for commercial gain.
Links to pornographic sites where services were available for fees has
also been found to be evidence of use for commercial gain.


The "likelihood of confusion" does not require actual confusion. In one
case, a panel found that the registrant intentionally created a
likelihood of confusion by registering a misspelling of the
complainant's mark and then selling similar products on its site.
Another panel ruled that use of a famous trademark in the domain name
creates likelihood of confusion because customers believe the site is
associated with the mark owner.



This article covered the basic elements regarding the assignment of
rights according to the UDRP. As in many areas of the law, special
issues, not specifically covered by the text of the law (or in this case
the text of the UDRP) arise. In the next part we will cover some of
those "special" cases such as registering domain names of famous people
who do not hold trademark rights to their name, generic word domain
names, and what should be considered "use" of a domain name.



Resources:

ICANN's UDRP, Rules, and related documents:
http://www.icann.org/udrp/udrp.htm


Using ICANN's UDRP:  Library, From Harvard University
http://eon.law.harvard.edu/udrp/library.html



:
--------- sponsor message ----------

USLaw.com - the easy way to law

Easy to understand legal information for 
consumers and small businesses. 

Questions about the law? Go to Ask A Lawyer.
You can have a private, one-on-one chat 
with a lawyer. Or, find a lawyer or law firm. 

http://mishpat.net/ads/uslaw 

--------- sponsor message ----------



############################
3. The Cyberlaw Reader
############################

Welcome to the new cyberlaw reader section. Each issue will link to 2-5
articles related to cyberlaw and online legal research.
Your recommendations are welcome, send suggestions to
mailto:editor@mishpat.net


* Mining Deeper Into the Invisible Web *
By Diana Botluk
Much of the information available online sits on open web pages, but a
great deal more, as many as 550 billion individual documents, sits in
databases that general search engines simply cannot reach. Much of this
data is freely available but you need to know where to look. This
article will guide you through the first steps of such research.
http://www.llrx.com/features/mining.htm


* Software to Track E-Mail Raises Privacy Concerns *
By Amy Harmon
Would it be helpful if you could know if and when the intended recipient
of an email actually opened it? It could help track advertising
campaigns or check if your resume was opened by a prospective employer.
HTML mail, supported by most of the modern email clients, makes all this
possible, but also raises many privacy concerns, as these new tools open
a new window of surveillance on a traditionally private sphere of
communications.
http://www.nytimes.com/2000/11/22/technology/22NET.html
(Free registration with the NY Times required)


* Buying and Selling Art on the Internet *
By Larry Berglas
We tend to talk about e-commerce law as a body of law governing
electronic transactions. However, many trades are subject to
industry-specific regulations. This article is an example of such
regulations governing websites that make it possible to purchase artwork
over the Internet.
http://www.uslaw.com/library/article/TNPCommercialCol1030art.html



############################
4. Cyberlaw resource review
############################

This week's resource is Delphion Intellectual Property Network at:
http://www.delphion.com (formerly known as the IBM patent database).

Delphion provides access to US patents (1974 to present, full text and
images), European patents (1980 to present), WIPO Patent Cooperation
Treaty documents (1990 to present) and more.

Some of the services are for a fee, but others, such as full text
searching and viewing of US patents, cross collection searching, and
enhanced image viewing are accessible free of charge, making it one of
the best patent research utilities.


If you would like to recommend an Internet legal resource, please send
the details to mailto:editor@mishpat.net Full credit is given to
contributors.
You can also recommend resources at the online bulletin board
http://mishpat.net/cgi-bin/bbs/UltraBoard.pl



--------- sponsor message ----------

FreeShop

FreeShop is the starting point for online shopping, featuring  
thousands of free and trial offers. Free samples, trial issues,  
demos, coupons, catalogs, trial periods, and  product information.

FreeShop.com is a leading online direct marketing network. Learn about
or try new products, and choose from a variety of free, trial and
promotional offers from hundreds of well-known companies.

http://mishpat.net/ads/freeshop


--------- sponsor message ----------



#############################
5. Cyberlaw news and updates
#############################


Mishpat Cyberlaw Informer brings you the latest news about online and
computer law, with links to the full reports available on the web.


Top news
========

* Yahoo! Loses French Nazi auction blocking case *
Judge Jean-Jacques Gomez in Paris ruled that Yahoo! must prevent French
Internet users from visiting its auction sites that sell Nazi
memorabilia. Judge Gomez gave the company three months to implement
blocking technology or pay a $13,000 fine for every day it did not
comply.
In May Judge Gomez ruled that Yahoo violated French law and offended the
collective memory of the country by allowing online auctions of Nazi
paraphernalia.
Yahoo's lawyers contended that it is technically impossible to identify
users by national origin and block their access to sites. The court
appointed a panel of three experts to evaluate that claim. The experts
testified that it probably would be possible for Yahoo to prevent most
French users (at least 70-80%) from reaching the objectionable sites.
One member of the panel, Vinton G. Cerf, who was recently elected as
ICANN's chairman, expressed concern about unwarranted regulation of
Internet traffic. 
Judge Gomez recalled that Yahoo! is able, at least in part, to recognize
French users and select them for French- language advertising banners.
He also cited Yahoo's policy of not allowing the sale of drugs, human
organs or living animals on its auction sites. 
http://www.wired.com/news/politics/0,1283,40285,00.html


* 7 new domain TLDs *
The Internet Corporation for Assigned Names and Numbers (ICANN) selected
7 new top level domain names (TLDs) .info and .biz for general use, .pro
for professionals, .name for personal sites, .museum for museums, .aero
for airline groups and .coop for business cooperatives. The new TLDs
will compete with .com, .net and .org.
ICANN will continue negotiations with the winning bidders to coordinate
the business and technical aspects of the new domains.
http://www.nytimes.com/2000/11/17/technology/17DOMA.html


* Review approves Carnivore *
The technical review of Carnivore, the Internet wiretap system developed
by the FBI, found that the system does what law enforcement officials
say it does: gathers information from ISPs about the online messages
sent and received by criminal suspects. The report found that the system
has room for improvement. For example, the system's operator should have
to confirm that such legal safeguards as search warrants have been
approved before monitoring can begin. The panel also suggested that
extensive auditing functions should be built into the system to ensure
that Carnivore is used to gather only information allowed in a
particular case. The report did not satisfy critics who said the study
of the system's specifications did not get to the heart of privacy
issues raised by Carnivore.
Full report at:
http://www.usdoj.gov/jmd/publications/carnivore_draft_1.pdf


* No software patents in Europe *
All European Union countries, except for Switzerland, Austria and
Liechtenstein voted to keep Article 52C (which bans software patents) in
the European Patent Convention.
http://www.wired.com/news/politics/0,1283,40329,00.html


* The most valuable domain name was transferred by fraud *
US District Judge James Ware concluded that Stephen Cohen, the current
holder of sex.com, most likely stole the rights to the domain from Gary
Kremen. Judge Ware determend that Cohen secured the domain name five
years ago through fraud, enabling him to make tens of millions of
dollars in sex.com profits. The judge also issued an order requiring
Cohen to place $25 million into a federal court account until the
litigation is completed and a final determination of damages is made.
http://www.wired.com/news/business/0,1367,40380,00.html



MP3.com - Universal settlement
===============================

MP3.com agreed to pay $53.4 million to the Universal Music Group of
Seagram in a deal approved by a federal judge minutes before the final
phase of their copyright dispute was scheduled to begin. Universal is
the last of the five major record companies to grant a license to
MP3.com to include its catalog the My.MP3.com service. Universal also
agreed to buy warrants for the rights to buy about 5 percent of
MP3.com's shares, a modest vote of confidence in the company's future.

Currently US law allows consumers to store their own music online and
listen to it anywhere after they copy their own CD's and upload them to
a virtual storage locker. My.MP3.com did not require users to upload
music. Instead, a user simply inserted a CD into the CD-ROM drive of a
computer and logged into MP3.com's site, at which point MP3.com would
automatically put a copy of the music into the person's virtual locker.
A user could also buy a CD from an online retailer and listen to it
immediately once MP3.com had confirmed the transaction.
http://www.thestandard.net/article/display/0,1151,20178,00.html


Unity Entertainment filed a copyright infringement suit against MP3.com
just two days after MP3.com settled with Universal.
http://www.infoworld.com/articles/hn/xml/00/11/16/001116hnmpsued.xml


Sony and Time Warner settled with MP3.com earlier this year for about
$20 million each, but their settlement included an "escalator clause"
requiring MP3.com to enlarge its layout if it agreed to a more lucrative
settlement with any other label. Warner Music Group already sent a
letter to MP3.com demanding the same terms as Universal received.
http://www.thestandard.net/article/display/0,1151,20302,00.html



Intellectual Property
===============

* HP Germany to pay for CD burners *
Hewlett-Packard is the first company to be subjected to a German law
requiring firms to pay for making CD burners that can be used to
infringe on copyrights. HP agreed to pay GEMA, Germany's main licensing
group, 3.60 marks ($1.54) for each unit sold since February 1998 and 12
marks ($5.16) for each one sold in the future. Other companies selling
CD burners in Germany will also be subject to the fees, which could vary
depending on what kind of agreement they reach with GEMA. Manufacturers
currently pay 2.50 marks ($1.07) for each cassette recorder and 18 marks
($7.74) for each video recorder sold in Germany.
 http://www.usatoday.com/life/cyber/tech/review/crh737.htm


* Intel and Broadcom settle *
Intel and Broadcom announced that they settled their trade secret
lawsuits against each other. Intel still has an unrelated lawsuit
pending claiming that Broadcom violated five of its patents.
http://www0.mercurycenter.com/svtech/news/breaking/ap/docs/662252l.htm


* BSA sues 13 piracy suspects *
The Business Software Alliance (BSA), which represents large software
companies, filed suit against 13 Americans, following a sting operation
in which the BSA paid about $1,600 over several months for software that
sells in stores for more than $50,000.
http://www0.mercurycenter.com/svtech/news/breaking/merc/docs/019187.htm


* Microsoft files piracy suit in Maryland *
Microsoft sued two Maryland software resellers, alleging that they were
selling counterfeit copies of Microsoft software. Microsoft filed about
150 such cases in the US in the past seven months.
http://www.washingtonpost.com/wp-dyn/articles/A37161-2000Nov16.html


* Marimba, Novadigm settle *
Marimba and Novadigm settled patent lawsuits, in which the companies
sued and counter-sued each other over the last 3 years.
http://news.cnet.com/news/0-1003-200-3663215.html


* Producer sues over Napster *
Producer Matthew Katz sued Napster and Bertelsmann e-Commerce Group
(which recently formed an alliance with Napster) claiming that his
record label has been nearly put out of business because the
file-swapping service has reduced demand. 
http://news.cnet.com/news/0-1005-200-3881135.html


* Taiwanese site threatens Yahoo! *
DGFamily.com, a Taiwan Web site, is threatening to sue Yahoo! China,
alleging that the portal used the DGFamily.com's copyrighted material on
its Chinese Web site.
http://www0.mercurycenter.com/svtech/news/breaking/internet/docs/658982l.htm



Domain names
===========

* New ICANN chairman *
Vinton Cerf, 57, was selected as chairman of the Internet Corporation
for Assigned Names and Numbers (ICANN). He replaces Esther Dyson, a
high-tech entrepreneur who left the board after two years. Cerf's
chairmanship is for one year and is unpaid. As a professor at Stanford
University in the 1970s, Cerf led a team that invented the protocols,
known as TCP/IP, which now serve as the Internet's basic communications
tools. He is currently senior vice president of Internet Architecture
and Technology for WorldCom .
http://www0.mercurycenter.com/svtech/news/breaking/ap/docs/646204l.htm


* Southafrica.com goes to court *
Virtual Countries, a Seattle company that registered domains named after
countries, filed a lawsuit naming the Republic of South Africa and the
South African Tourism Board, in an attempt to stop the country from
launching a UDRP proceeding against it. The South African government's
Department of Communications said it would file a UDRP arbitration
complaint in order to win the rights for southafrica.com
http://www.newsbytes.com/news/00/158209.html


* .biz and .bz *
A US federal judge rejected a restraining order request by Economic
Solutions, which claims it owns the ".bz" domain name suffix, and ruled
that the new ".biz" suffix is not confusingly similar to ".bz".
http://news.cnet.com/news/0-1005-200-3685907.html


* ICANN payment rebellion *
Independent auditors from KPMG could not support $1.35 million that
ICANN is counting on from operators of region-specific Internet domain
suffixes. ICANN maintains the regional operators' suffixes within its
root servers, but ICANN is having trouble collecting from the operators
who do not want to pay for networking services they used to receive for
free from the US government.
http://www0.mercurycenter.com/svtech/news/breaking/ap/docs/652991l.htm



Cyber Crime
=========

* Harsher sentences proposed for crypto criminals *
Under proposed legislation pending in the US Senate, criminals who use
encryption to conceal their wrongdoing will get harsher sentences than
those who stick to plaintext.
http://www.securityfocus.com/news/108
I want to thank Joe Mezzanini from the Cybercrime Alerts at
http://theMezz.com for sending me this update.


* Hacking indictment *
Patrick McKenna was charged with unauthorized computer intrusion for
accessing his former employer's server without authorization, deleting
675 files, altering billing records and transmitting emails containing
false statements to clients and customers while acting as an authorized
representative of the company.
http://www.fosters.com/news2000/nov_00/13/ha1113b.htm


* Japanese hackers arrested *
Three Japanese people were arrested on suspicion of illegally obtaining
usernames and passwords and using them to invade sites belonging to a
university and a tourism association. 
http://www.yomiuri.co.jp/newse/1124cr05.htm


* Yahoo! to fight child porn *
The Yahoo! UK managing director confirmed that the company will employ
an inspector charged with ensuring that Yahoo!'s Messenger system is not
polluted with pedophile content.
http://www.zdnet.com/zdnn/stories/news/0,4586,2656730,00.html
 

* Japanese police inspect Yahoo! offices in child porn investigation *
Tokyo police inspected Yahoo!'s Japan offices in connection with the
alleged sale of child pornography videos through the company's site. 
http://www0.mercurycenter.com/svtech/news/breaking/internet/docs/677676l.htm


* Pyramid operators fined *
Two Connecticut residents agreed to pay more than $72,000 to settle
allegations they operated a pyramid scheme on the Internet. 
http://www.newsbytes.com/news/00/158688.html



Securities
========

* World Online under investigation *
Dutch ISP World Online announced that it will counter-sue the
shareholder group which demands a full refund for their depressed
shares. World Online is under investigation by Dutch authorities since
it was revealed that founder and deposed chairwoman Nina Brink sold her
shares in the company prior to the firm's IPO.
http://www.thestandardeurope.com/article/display/0,1151,12791,00.html


* Court block fake stock offers *
A federal court in Florida shut down the operations of two Internet
companies that raised more than $2 million from US investors through a
fraudulent "high-tech" stock offering.
http://www.newsbytes.com/news/00/158475.html


* Online casino stock scam *
Developers of World Interactive, an Internet gambling casino, agreed to
pay $1.8 million for settling charges that used false claims to sell
stock in their business. Investors who bought in for just one $10,000
unit were told their investment would grow to $150,000 in just one year. 
http://www.newsbytes.com/news/00/158066.html



Privacy & Spam
===============

* 24/7 blocks MAPS *
 US District Judge John Kane issued a temporary restraining order
stopping the Mail Abuse Prevention System (MAPS), a leading anti-spam
group, from including 24/7 Media subsidiary Exactis in its blacklist.
http://www.newsbytes.com/news/00/158350.html


* MAPS adds MSN to blacklist *
The Mail Abuse Prevention System (MAPS) added several of Microsoft's MSN
systems to its anti-spam blacklist. The lists are used by many Internet
service providers to protect their users from unsolicited commercial
email. Ironically, MSN's Hotmail service is a subscriber to the MAPS.
http://www.internetnews.com/wd-news/article/0,,10_512791,00.html


* Online advertisers sued for cookies *
Online advertising companies, Avenue A and MatchLogic, were separately
sued for allegedly tracking customers without their permission, by
planting 'cookies' on users' hard drives and then tracking their
movements across the Internet. Both suits seek class action status.
http://news.cnet.com/news/0-1005-200-3821026.html


* Glitch exposes mortgage application data *
A security breach in software used by many mortgage brokers caused at
least 700 Americans' loan applications to be posted online.
http://www.usatoday.com/life/cyber/tech/cti810.htm



Online Speech
===========

* Online speaker - anonymous but not shielded *
A Pennsylvania state court judge ruled that public officials defamation
suits to discover their online critics' identities. However, the judge
did not dismiss the case. Allegheny County State Superior Court Judge
Joan Orie Melvin sued an anonymous Internet critic who suggested on that
she lobbied on behalf of an attorney who was seeking a judgeship. The
case will go ahead but the defendant's identity will be subjected to a
protective order until the speaker has had an opportunity to prove that
the defamation suit is without merit.
http://www.newsbytes.com/news/00/158219.html


* Canadian posted vote results before polls closed *
Paul Bryan, a British Columbia (Canada) Internet software developer,
defied the Canadian federal Elections Act and began posting election
results from Atlantic Canada on his site before polls closed in British
Columbia.
http://www.globetechnology.com/archive/gam/News/20001128/UNETTN.html


* ACLU for vote-swapping sites *
The American Civil Liberties Union (ACLU) filed a federal lawsuit on
behalf of a site owner who aborted his vote-swapping services a few
weeks before the US presidential election, after learning that the
California Secretary of State was threatening to pursue criminal action
over such operations. 
http://news.cnet.com/news/0-1005-200-3880598.html


* Singapore computer store threatens online critics *
Video-Pro, a Singapore computer shop, threatened to sue about 60 people,
most of them teenagers, for posting defamatory statements against it on
hardwarezone.com, a local portal. 
http://www.zdnetasia.com/news/dailynews/story/0,2000010021,20155265-1,00.htm



eCommerce 
=========

* Online map does not create venue *
The Pennsylvania Superior Court ruled that a Philadelphia Court of
Common Pleas was correct when it said that even though a Delaware County
restaurant's web site provided driving directions from Philadelphia, an
email newsletter and the online sale of gift certificates, it did not
amount to "regularly conducted business" in the city, and therefor
transferred the case to Delaware County. The court said the driving
directions and e-mail newsletter were both methods of soliciting
business but were similar to advertisements that are not a sufficient
presence to elicit venue. 
http://www.law.com/cgi-bin/nwlink.cgi?ACG=ZZZ84C6MVFC


* No gun sales on eBay *
EBay executives were  questioned by a federal grand jury investigating
whether the online auctioneer broke the law when it permitted gun sales
through its site. On Feb. 19, 1999, three weeks after receiving a
subpoena from federal prosecutors, eBay announced that it was
voluntarily banning gun sales on its site. 
http://www.usatoday.com/life/cyber/tech/cti832.htm


* UK liquidates free-PC company *
The British government liquidated an Internet trader that offered
almost-free PCs, after more than 7,000 potential buyers paid 100 pounds
each for their subsidized machines and did not receive them.
http://www.newsbytes.com/news/00/158665.html


* Amazon's workers try to form union *
Amazon.com workers around the world are trying to unionize. Workers'
complaints include mandatory overtime, no time off during the holidays,
low job security and shift changes without notice.
http://www.thestandard.com/article/display/0,1151,20357,00.html


* Lycos sues FamilyTime.com *
Internet portal Lycos sued FamilyTime.com accusing it of botching the
creation of a new site for the Lycos Network, then failing to pay its
bills. 
http://www.bostonherald.com/business/technology/lycos11152000.htm



Regulation
========

* New York can't limit online tobacco sales *
Judge Loretta A. Preska, of the Federal District Court in Manhattan,
ruled that a New York law banning the direct sale of cigarettes to New
Yorkers via the Internet is unconstitutional.
http://www.nytimes.com/2000/11/17/technology/17CYBERLAW.html


*  Driving license site shut down *
The Missouri attorney general persuaded Hypermart, an ISP, to shut down
Drivelegal.com, a site selling international driver's licenses to
drivers with revoked or suspended licenses. Although Drivelegal.com is
based in California, the Missouri AG took action against it claiming it
made false claims that violated Missouri's consumer protection laws. 

http://www.apbnews.com/newscenter/breakingnews/2000/11/17/drivelegal1117_01.html

* New Zealand anti hacking law moves ahead *
A planned amendment to New Zealand's crime bill that would outlaw
hacking, while also allowing security services to hack and intercept
email, passed through to the Government's Law and Order Select
Committee. 
http://www.newsbytes.com/news/00/158285.html


* Hong Kong will not ban online gambling *
Hong Kong's Gambling (Amendment) Bill 2000, that will restrict gambling
within Hong Kong, will not address online gambling. 
http://www.newsbytes.com/news/00/158547.html


* LA calls for open access *
The city of Los Angeles passed a resolution calling for open-access to
broadband cable Internet platforms, providing funds for the city to
lobby federal regulators.
http://www.newsbytes.com/news/00/158480.html


* Australian ISP must join Industry Ombudsman *
Australia's Federal Court ruled against two Internet service providers
who were resisting joining the Telecommunications Industry Ombudsman,
the company set up to run the telecom industry regulatory body.
http://www.it.fairfax.com.au/breaking/20001122/A9969-2000Nov22.html



Misc.
=====

* Microsoft files appeal *
Microsoft filed its principal appeal brief with the US Court of Appeals,
outlining its arguments that the District Court's judgment should be
reversed, and that the DOJ's antitrust case against the company should
be dismissed.
http://www.microsoft.com/presspass/trial/appeals/11-27brief.asp


* Immigrant settles sweatshop lawsuit *
Kamsan Mao, a Cambodian immigrant, fired for refusing to make electronic
parts at home for less thanminimum wages, settled an unfair labor
practices suit against Top Line Electronics in San Jose. Financial terms
were sealed.
http://www0.mercurycenter.com/svtech/news/breaking/ap/docs/630024l.htm


* Rambus accused of "judge shopping" *
In a ruling at the US International Trade Commission, Rambus was
reprimanded for "judge shopping" and restrictions imposed on it if it
ever filed another synchronous DRAM patent complaint at the trade body.
Rambus filed to withdraw its ITC patent suit against Hyundai, over SDRAM
patents, soon after Judge Sidney Harris, known to frequently to rule
against patents of firms filing complaints, was assigned the case. 
http://www.semibiznews.com/story/OEG20001115S0062


* Juno warns investors from investigation outcome *
Juno Online Services, the world's third-largest ISP, said investigations
into its marketing and customer service practices could result in an
"unfavorable outcome" for investors.
 http://www.newsbytes.com/news/00/158424.html


* Stolen Florida voting machine for sale on eBay *
Two Florida men are charged with stealing a Palm Beach County voting
machine and trying to sell it on eBay.
http://www.newsbytes.com/news/00/158341.html



That is all for this time,
Yedidya (Didi) M. Melchior 
Editor 

The Cyberlaw Informer

Your E-mail Address



Back to Mishpat-Update archive



law bar



| Home | About | Comments | Advertise With Us | Bookstore | Legal News | Add a Resource |

| Discuss Law | Recommend this site | Advanced Search | What's New |

| Israeli Lawyers | Directory | Privacy Policy | Disclaimer |



Copyright © Mishpat-Net 1998-2004