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    Uniform Dispute Resolution Policy (UDRP) Groundbreaking NAF Decision in NEW.NET Domain Case
    posted by michael on Thursday August 29 2002, @02:43PM

    dtobias writes "A very interesting decision was just reached by a National Arbitration Forum panelist in what I believe is the first arbitration decision involving a new.net domain. Case 114371 concerned sex.shop. Since new.net domains aren't actually part of the official naming system of the Internet, you must append new.net to them unless you have a special plugin, or your ISP has configured its DNS servers to resolve these names. Hence, from the standpoint of the real domain name system, these names are fourth-level domains beneath new.net and the (third-level) "TLDs" new.net makes available for registration within. I didn't even realize that NAF had any jurisdiction over them, but apparently they have some sort of agreement to resolve disputes just like ICANN has for the domains it controls, and this is the first case under it.

    The panelist, Peter L. Michaelson, Esq., was fully aware of the groundbreaking nature of the decision, and ruled on several points in the case in a manner clearly intended to set precedent for future cases, not only in new.net challenges, but with regard to any other new TLDs, official or unofficial, that may be launched in the future."



    Of the greatest interest is the fact that the complainant, Von Eric Lerner Kalaydjian, not only lost the decision but was found guilty of reverse domain hijacking, despite actually owning a registered trademark identical to the domain in dispute. Many other panelists have regarded registered trademarks as magical talismans that automatically prevailed against all opponents who merely registered a domain without owning a trademark themselves. Whether the name in question was a generic word also was irrelevant, as was any consideration of whether the use of the domain actually interfered in any way with the use of the trademark.

    As I pointed out earlier, this attitude made possible the brazen act of domain reverse-hijacking by managing to get a trademark on a domain name you don't actually own and then using it to prevail against the registrant in a challenge. This was done with an existing domain in the ec.com case, and was used to "jump the queue" for a name in a new TLD in the paint.biz case. But the sex.shop panelist wouldn't have any of it.

    Before disposing of the case, however, the panelist did point out that the mere genericness of the second-level label of a domain (technically fourth-level in this case unless you have the new.net plugin) isn't necessarily sufficient to dismiss the trademark claim out of hand; despite a USPTO assertion that TLDs have no source-identifying significance, they can in fact be a significant part of a trademark on occasion; this is true even in old TLDs, where "Amazon" has lots of meanings (a river; a mythical race of female warriors) but amazon.com uniquely identifies an online merchant; but as new TLDs get added, many more cases will come up where the TLD must be considered to judge infringement. For instance, if a .hut TLD is added, pizza.hut would likely be a trademark infringement even though pizza itself is generic.

    However, "Pizza Hut" is a legitimate, well-established trademark that has been used extensively in commerce and achieved wide fame, not a brazen attempt to reverse-hijack a domain in a prospective .hut TLD. (I'd rather get jabba-the.hut myself...) Not all trademarks are created equal. The complainant in this case has openly admitted in an article that his game plan was to get trademarks to "sex" with various possible future TLDs appended in order to be first in line to get the actual domains when and if they were finally launched. Even though the USPTO bought this enough to allow at least some of these registrations to be completed, this still doesn't mean that the trademark owner can prevail in a challenge, or even escape a judgment of reverse hijacking.

    In the panelist's words, "As to the Respondentís contention of reverse domain name hijacking, the Panel not only agrees with the Respondent but also finds that the Complainantís actions in that regard are clear, unmistakable and reprehensible." The complainant had managed to get a trademark registration to sex.shop, but failed to offer any proof of significant use of this name in commerce, or the achieving of any "secondary meaning" in the mindspace of the public, who, in the opinion of the panelist, would be much more likely to expect an adult-content site (such as provided by the respondent) under such a name, than anything pertaining to tanning oil (which is the subject matter of the trademark registration). In short, the trademark was registered not for any legitimate commercial use, but merely as a strategy to grab a domain name without regard to the registry's startup policy. And this constitutes reverse hijacking, trademark or not.

    This is a decision that is likely to be cited extensively in the future, especially in new-TLD startup challenges.


     
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    This discussion has been archived. No new comments can be posted.
    Groundbreaking NAF Decision in NEW.NET Domain Case | Log in/Create an Account | Top | 86 comments | Search Discussion
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    Re: Groundbreaking NAF Decision in NEW.NET Domain
    by dtobias (dan@tobias.name) on Friday August 30 2002, @01:25AM (#8773)
    User #2967 Info | http://domains.dan.info/
    I see most of the commentary so far is pro-and-con about new.net. I'll note that my intent in posting this article was not to support new.net, or to bash them either (though it is my opinion that their domains aren't really part of the Internet's naming system except as fourth-level domains beneath new.net -- by itself, a new.net name is no more an Internet address than is an AOL keyword), but to mention important aspects of the decision that are likely to become relevant precedents in all sorts of domain disputes in the future, including ones regarding ICANN-approved TLDs.
    [ Reply to This | Parent ]
    Re: Groundbreaking NAF Decision in NEW.NET Domain
    by fnord (groy2kNO@SPAMyahoo.com) on Friday August 30 2002, @03:32AM (#8784)
    User #2810 Info
    Even Amazon has a history. -g
    [ Reply to This | Parent ]
    • 1 reply beneath your current threshold.
    Decision with links to the exhibits and proofs
    by simon on Thursday August 29 2002, @11:32PM (#8770)
    User #2982 Info | http://www.nic.pro/
    You can browse the decision in full with links to the exhibits and proofs under http://sex.shop.steinle.biz

    See e.g. the Complainants "website", see the link to the Complainants abuse trademark registrations, see the link to the Case "Amazon.com, Inc v. Von Eric Lerner Kalaydjian et al, docket C00-1740R (U.S.D.C. W.D.Wa.)", look who has registered the domain name www.home.depot, ...nic.PRO will be back online soon with FREE sub-domains. Dowload the FREE plug-in at
    www.name-space.com/software
    [ Reply to This | Parent ]
    USPTO on source-indication of TLDs
    by dtobias (dan@tobias.name) on Friday August 30 2002, @04:24AM (#8789)
    User #2967 Info | http://domains.dan.info/
    I still think the USPTO opinion is sound where most cases are concerned. Properly, the .com (or other TLD) part of a domain address is merely a part of the addressing system, indicating such things as whether the entity is commercial or not, but not properly a part of the name of the entity in the real world outside the Internet. The naming of companies with ".com" at the end is one of the idiocies of the "dot-com boom" era that thankfully seems to have gone out of fashion since. In general, a company shouldn't trademark "BlahBlah.com" as their name, brand, and mark; they should trademark "BlahBlah", with the ".com" version merely being their address. I still shudder whenever I read an arbitration case or court decision that refers to "the famous mark BlahBlah.com", feeling like shouting back, "BlahBlah.com isn't a mark, famous or otherwise... it's a goddamned address!"

    However, I can see that there are special cases where the TLD is an essential part of a mark, where the second-level name by itself is a generic word, but with a particular TLD at the end it uniquely and famously identifies a site. There, trademarking the domain name in its entirety makes some sense, but in such cases the scope of the trademark accordingly should extend only to that particular domain name; a trademark on amazon.com shouldn't prevent the registration of amazon.biz or amazon.info, or give the trademark owner any special rights to those names in a sunrise period, since the other names don't match the specific trademarked name amazon.com -- the trademark owner would have to demonstrate rights to the name Amazon by itself to prevail against non-dot-com names.

    Construed in this narrow way, a trademark to a domain name, TLD and all, is mostly useless; it protects only against infringement of the exact name, but if the trademark owner already owns the corresponding domain name, then nobody else can use it anyway -- the trademark would only help in the rare cases where the owner accidentally lets the registration lapse or be transferred to a different owner and is trying to get it back, or where an alternative root operator sets up a conflicting domain.

    In cases where the trademark owner doesn't already own the corresponding domain, you have the situation as in this decision, where the trademark owner really got told off in strong terms by the panel.
    [ Reply to This | Parent ]
    • 1 reply beneath your current threshold.
    Re: Read the Container.com TTAB decision
    by dtobias (dan@tobias.name) on Friday August 30 2002, @04:59AM (#8793)
    User #2967 Info | http://domains.dan.info/
    Is it available online?
    [ Reply to This | Parent ]
    • 1 reply beneath your current threshold.
    Dan Tobias frequently browses the New.net message
    by simon on Friday August 30 2002, @06:42AM (#8797)
    User #2982 Info | http://www.nic.pro/
    like other professionals.

    Why do you think he knows about this decision? He posted there one or two times
    I started a thread about it there.

    Dan Tobias and other professionals know that New.net has some potential. In fact New.net does not offer "real" domain names. but their domain names act like "real" domain names for 130 million user. The ordinary Internet user does not care if it is a "real" domain name or if it is a New.net domain.

    Some of the new.net haters (why do they hate New.net? Did they missed an oppotunity?;-)) say: "New.net is dead".
    Quite the opposite is true. New.net domain names which are submitted to New.nets Quick! search engine perform better than ever. You may have a look at my stats :-) for http://www.drugs.shop

    New.net haters should realize that New.net will not go out of business. New.net has control over approximately 70 million browsers via their Plug-in. With this 70 million browser they can and in fact they generate the money to be profitable. Every entry which is not a "ICANN domain" or which is not a New.net domain which usually leads to an error page or to microsofts auto-search page is routed to New.nets quick! search engine, where relevant sites are listed. :-)

    Happy New.net bashing while I make money in providing and matching relevant content to my New.net domain names. ;-) :-)nic.PRO will be back online soon with FREE sub-domains. Dowload the FREE plug-in at
    www.name-space.com/software
    [ Reply to This | Parent ]
    Re: Groundbreaking NAF Decision in NEW.NET Domain
    by simon on Friday August 30 2002, @06:55AM (#8799)
    User #2982 Info | http://www.nic.pro/
    what's tiny? don't you see the counter on every page and even the big diagram on new.nets home page?
    please check your glassesnic.PRO will be back online soon with FREE sub-domains. Dowload the FREE plug-in at
    www.name-space.com/software
    [ Reply to This | Parent ]
    PIZZA.HUT is already registered!
    by simon on Saturday August 31 2002, @05:21AM (#8848)
    User #2982 Info | http://www.nic.pro/
    check out more details on http://sex.shop.steinle.biznic.PRO will be back online soon with FREE sub-domains. Dowload the FREE plug-in at
    www.name-space.com/software
    [ Reply to This | Parent ]
    Re: Groundbreaking NAF Decision in NEW.NET Domain
    by Samowamo on Saturday August 31 2002, @05:00PM (#8865)
    User #3479 Info
    This is the correct decision. There are a handful of trademark registrations that contain TLDs (in addition to Amazon.com, there is also Match.com; I imagine there must be a few others). The panelist was technically incorrect about something, however: New.net domain names are true SLDs when the ISP solution is used (he had suggested that the ISP does what the New.net client does: appends .new.net). The ISP DNS servers handle a query for a new.net SLD the same way that they handle a query for an ICANN SLD: they resolve through a cached IP address for the new.net extension--basically, the ISP DNS servers permanently cache the IP address for the New.net TLD instead of temporarily caching the address as they do with the IP addresses of the ICANN names. Other than this minor technical error, the decision seems like the correct one.
    [ Reply to This | Parent ]
    Decision now available on http://www.steinle.law.p
    by simon on Sunday September 01 2002, @08:31AM (#8880)
    User #2982 Info | http://www.nic.pro/
    Decision with some links to background infomation now available on http://www.steinle.law.pronic.PRO will be back online soon with FREE sub-domains. Dowload the FREE plug-in at
    www.name-space.com/software
    [ Reply to This | Parent ]
  • 3 replies beneath your current threshold.

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