CPT's Page of Selected Domain Name Disputes

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CPT's August 11, 2000 Comment on Terms of Reference, Procedures and Timetable for the Second WIPO Internet Domain Name Process

Disputes

astrocartography.com
bancompusa.com
barcelona.com
bodacious-tatas.com
bridgestone-firestone.net
catmachines.com
cnndn
colonialwilliamsburg.com
corinthians.com
crew.com
csa-canada.com
dodgeviper.com
esquire.com
harrypotterguide.co.uk
jewsforjesus.org
juliaroberts.com
kelsonmd.com
kwasizabantu.com
madonna.com
ncaa*.com
newworldcoffeefraud.com
newyorktimes.com
nissan.com
penguin.org
porsche*.*
pueblo.net
pueblo.org
peta.org
scientologie.org
shack.com
sting.com
stmoritz.com
tonsil.com
walmartcanadasucks.com
webergrill.com

astrocartography.com
whois
In a dispute involving two competing astrological consulting services a UDRP proceeding the National Arbitration Forum panel ruled that though the domain name was confusingly similar to the complainants trademark the respondent had a legitimate interest in the name on the grounds that "astrocartography" is a generic term.
UDRP/NAF Decision

bancompusa.com
whois
stopcompusa.com
whois
The respondent registered the domain names in order to publish a website critical of CompUSA. In its complaint, CompUSA alledged that the domain names were confusingly similar to its own and that they were being used to disrupt its business, indicating a lack of legitimate interest as well as bad faith. The single panelist rejected CompUSA's arguement on all three criteria necessary to transfer the domain name:
Complainant has failed to show that any of the three elements of Policy Paragraph have been violated. First, there is absolutely no confusion or similarity, much less identity, between the domain names and the trademarks held by Complainant. No one could confuse "COMPUSA", or anyone of the registered trademarks, and "STOPCOMPUSA.COM" and "BANCOMPUSA.COM". Complainant has also failed to show that Respondent has no rights or legitimate interests in the domain names. Respondent's rights clearly exist under the First Amendment. His right to offer criticism of the goods and services provided by Complainant are as legitimate as any commercial activity.
In his summary the panelist commented on the proceeding:

After reading the pleadings, the Panelist is left with a bad taste. Here, a large company, faced with criticism from an individual, has attempted to use this process and procedure to stifle that criticism. If the actions and conduct of Respondent are wrongful, then Complainant has access to the courts of law, where the truthfulness of the allegations made by Respondent can be challenged. Use of this forum by Complainant in this context is inappropriate and constitutes "cyber-bullying."

UDRP/NAF Decision

barcelona.com
whois
In this UDRP/WIPO decision the single panelist ruled the domain name be transferred from the respondent who sought to develop a website about various cities named Barcelona throughout the world, to the city of Barcelona, Spain. On the UDRP criterion of legitimate interest on the part of the respondent the panelist ruled that :
"... such right of interest is and will be always subject to the lack of disputes with parties having better rights or more legitimate interests as in this case."
UDRP/WIPO Decision
CPT Comment

bodacious-tatas.com
whois
In this UDRP/WIPO decision the panel ruled for the cancellation of the domain name. The action was brought by Tata Group India, a multibillion dollar industrial company with a trademark on "tata". The panel ruled that the Tata trademark "deserve[s] wide protection" due to its "aura of high repute", and that bodacious-tatas, a term that means "large female breasts" in parts of the US, was confusingly similar to the Tata trademark.
UDRP/WIPO Decision
CPT Comment
bodacious-tatas.org

bridgestone-firestone.net
whois
Bridgestone-Firestone, the giant manufacturer of tires, owns the domains bridgestone-firestone.com, ihatebridgestone.com, ihatefirestone.com and bridgestonesucks.com. Jack Myers, a former employee of Bridgestone, registered bridgestone-firestone.net, which he uses as a consumer-employee forum. The web page has section such as "What BFS doesn't want you to know." A WIPO UDRP panel ruled that:
Respondent is not a licensee of the Complainants and is not otherwise authorized to use the Complainants' marks. However, the Policy sets forth examples of circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name, including:
... 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 "fair use doctrine applies in cyberspace as it does in the real world." See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1065 (9th Cir. 1999). . .

... although the domain name registered by (Jack Myers) is identical or confusingly similar to the trademarks in which the Complainants have rights, (Jack Myers) has legitimate fair use and free speech rights and interests in respect of the domain name, and ... has not registered and used the domain name in bad faith. The Panel therefore denies the claim of the Complainants for transfer of the domain name.


UDRP/WIPO Decision
CPT Comment

catmachines.com
whois
The domain name was transferred to the complainant, after Caterpillar, the industrial machinery manufacturer, maintained that the domain name was confusingly similar to caterpillar.com.
UDRP/WIPO Decision
CPT Comment

cnndn
CNNdn - "the financial crash network" - is a satirical website that borrows the appearance of CNNfn - the CNN financial network - to comment on the state of the economy. According to a February 1, 2001 Wired News article, CNN alleged that CNNdn was a "textbook case of cyberpiracy under the Anti-cybersquatting Consumer Protection Act," and has attempted to obtain a temporary restraining order against the site and its operator, Zack Exley.
Here is a summary of the legal correspondence between CNN and Mr. Exley.

colonialwilliamsburg.com
whois
The Colonial Williamsburg Foundation filed an action under the Anti-Cybersquatting Consumer Protection Act to prevent the domain name from being transferred to Hotel and Restaurant Employees Local 25 while in the midst of a labor dispute. The defendant, alleged to be a cybersquatter, sought to transfer the domain name to the union for one dollar plus transfer costs. Colonial Williamsburg received a temporary restraining order preventing the transfer of the domain from the Federal District Court of Eastern Virginia. In its opinion the court cited the threat of irreparable harm on the part of Colonial Williamsburg if the transfer went ahead.

more

corinthians.com
whois
In this complex case a Brazilian soccer team named Corinthians sought the transfer of the domain name from an individual who had posted passages from the Bible on the website. The respondent maintained that "Corinthians" as a word in common usage had legitimate uses other than as the name as a soccer team. The respondent also asserted that the should not be construed as having registered the domain in bad faith because they were not even aware of the soccer teams existence at the time they registered the domain. In its decision the panel ordered the domain be transferred, primarily on the basis of the respondents offer to sell the domain to the soccer team.
UDRP/WIPO Decision

csa-canada.com
whois
csa-international.net
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A firm named Care Tech Industries sought to have one of its products, an ozone generator, certified by the Canadian Standards Association (CSA). When CSA failed to certify its product Care Tech registered the domain names csa-international.net and csa-canada.com and used the domains to publish a website critical of CSA. CSA was successful in having the domain names transferred to it in a UDRP/WIPO proceeding. In its decision the WIPO UDRP panelist explicitly rejected the free speech defense.
At each website, Respondents attack and criticise the Complainant and its staff in relation, inter alia, to its failure to certify Respondents' Odatus generator. . . they are not using the domain names in connection with a bona fide offering of goods or services . . . Examination of Respondents' web pages clearly show that they are using their domain names to attract persons to their sites for the purpose of publicly attacking the Complainant and members of its staff and pleading its case in relation to a dispute between themselves and the Complainant...

Persons attracted to the site are likely to be persons seeking contact with Complainant, not persons seeking contact with Respondents. . . Respondents claim to rights and legitimate interests is essentially based on a claim to freedom of speech and, expression of opinion, but that right does not require the use of Complainant's trade marks in the domain names for that purpose.


UDRP/WIPO Decision
CPT Comment

crew.com
whois
The domain name was transferred to J. Crew, which claimed that its service mark on "crew" gave it rights to crew.com. One WIPO panelist in the UDRP proceeding issued a stinging dissent, saying:
"Furthermore, the majority seems to assume that a trademark owner has some sort of God given right to use the trademark to the exclusion of others. As Justice Holmes observed, 'A trademark does not confer a right to prohibit the use of the word or words?. A trademark only gives the right to prohibit the use of it so far as to protect the owner's goodwill against the sale of another's product as his.' Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). In short, the Complainant does not own all rights to the generic word CREW by virtue of its trademark registration."

UDRP/WIPO Decision
CPT Comment

dodgeviper.com
whois
A fan of the automobile Dodge Viper published a website at this domain. DaimlerChrysler asked to have the domain name transferred. The WIPO ruled that the fan site was not a legitimate use of the trademarked names, explicitly considering and rejecting any fair use considerations. Further, the panel ruled that the domain name had been registered in bad faith, this after DaimlerChrysler had twice featured the website in its publications. The individual running the fan site pursued the case in a Virginia state court and was able to retain the domain. 
Wired article about the dispute
UDRP/WIPO Decision
CPT Comment

esquire.com
whois
The domain name was transferred to Hearst Magazines, publisher of Esquire, the US men's magazine. The panel ruled to transfer the domain partly on the basis of a lack of legitimate interest on the part of the respondent, despite the respondent's apparent interest in developing a vanity email service using the domain name. Milton Mueller issued a strong dissent, saying:
"The UDRP is intended to prevent trademark owners from being extorted by cybersquatters, but it is also intended to protect legitimate registrations from being threatened by overreaching trademark owners. A correct application of the spirit and letter of the UDRP gives each of these concerns equal weight. The majority opinion fails to balance these concerns. Absent any evidence that the original registrant was trading specifically on the value of the Esquire Magazine mark, I cannot conclude that the name was registered in bad faith."
 
UDRP/NAF Decision
CPT Comment


harrypotterguide.co.uk Warner Brothers owns the film rights to several Harry Potter children's books. The corporation has aggressively enforced its intellectual property rights in cyberspace, including by threatening legal action against 15-year Claire Field -- operator of the harrypotterguide.co.uk fan site on the grounds that the website is "likely to cause consumer confusion or dillution of intellectual property rights." Additionally, Warner Bros. has attempted to purchase the domain name from Field for less than 10 pounds.

Article in the Register

JewsforJesus.org
whois
This dispute involved a critic of Jews for Jesus. Here is a story about the dispute in the New York Times.

JuliaRoberts.com
whois
This is a dispute over a domain named Julia Roberts, about Julia Roberts the movie star, but run by someone not authorized by Julia Roberts. The owner of the domain, Russell Boyd, says he was a fan of Julia Roberts. From the WIPO UDRP panel is this quote:
the Respondent elaborates that "If Julia Roberts had picked up a phone and said, 'Hi Russ, can we talk about the domain name juliaroberts.com?' she would own it by now." Then Respondent concludes "But as I mentioned at the beginning of this response, I still think Julia is nifty crazy wacko cool."
Mr. Boyd's feelings toward Julia Roberts appear to have changed, following her efforts to take away his domain, and the web page featured such quotes as:
Ben, how does it feel knowing that so many men have penetrated "your" woman so recently? . . . Why settle for an aging crusty divorcee getabout?
A WIPO panel ruled against the domain owner, but the case is now in court, with the domain owner winning the early rounds.
UDRP/WIPO Decision

kelsonmd.com
whois
The respondent used the domain to publish a website critical of her former employer, Kelson Physicians Partners, Inc., the complainant. The single panelist set aside the respondent's argument that freedom of speech protected her use of the trademark, and ruled the domain name be transferred.
UDRP/CPR Decision

kwasizabantu.[com,org,net]
whois
The respondent published a website critical of the KwaSizabantu religious sect. The WIPO transferred the domain names citing "such activity amounts to tarnishing the activities associated with the trademark or service mark 'KwaSizabantu'". The panel rejected a defense based on freedom of speech, saying:
"The admitted nature of the use of the domain names ... includes alternative views and indeed critical views concerning ... [KwaSizabantu] and its activities. The Panel holds such activity amounts to tarnishing the activities associated with the trademark or service mark "KwaSizabantu" ... . Therefore, ... [Rost] does not establish any rights or legitimate interests ..."
 
UDRP/WIPO Decision
CPT Comment

madonna.com
whois
Madonna, the celebrity, is trying to take the domain madonna.com from its current owner, Dan Parisi, famous for such domains as Whitehouse.com, which is a porno site. A few articles about this dispute (as reported on madonna.com) include ZDNet's Madonna wants her name back CNET's Madonna.com embroiled in domain ownership spat WiredMaterial Girls wants her good name. and Nebraska Hospital Caught in Madonna Trademark Spat.

ncaa*.com 32 various domain names containing the string "NCAA" (a trademark of the National College Athletic Association) were registered by Rosmary Giancola. WIPO ruled that 20 of Giancola's domain names -- including ncaamensbasketball.com and ncaacollegefootball.com should be transferred to the NCAA because they were "registered and used in bad faith". WIPO found that Giancola's remaining "NCAA" domain names (which dealt with sports gambling) such as ncaabasketballodds.com were not confusingly similar to the Complainant's trademark.
WIPO Decision.

newworldcoffeefraud.com
whois
A New World Coffee franchisee maintaining a website critical of New World Coffee franchising practices, defeated a motion to issue a temporary restraining order under the Anti-Cybersquatting Act. The judge ruled that the domain name was not confusingly similar to the plaintiff's trademark. From the newworldcoffeefraud.com web page:
This site is sponsored by, and in support of, people damaged by New World Coffee Manhattan Bagel's Fraud in selling franchises. We will work indefinitely, using any legal means necessary, to achieve two goals: First, to obtain restitution for New World's victims.  Second, to punish agents of  New World and Manhattan Bagel responsible for these actions -- whether or not they are still affiliated with the company.

more

newyorktimes.com
whois
The New York Times Company (NYT) want to gain control of the domain name newyorktimes.com, having failed to register it when they began publishing their website under nytimes.com in 1994. In 1996 newyorktimes.com was registered by New York Internet Services (NYIS), soon afterwards NYT succeeded in having the domain registrar, Network Solutions, place the domain "on hold", effectively censoring the website. With the creation of ICANN's policy for resolving domain name disputes (UDRP), NYIS regained control of the domain name pending the outcome of a UDRP case now before WIPO's Arbitration and Mediation Center. The current owner of the domain says it is to be used for comment on the New York Times. The page now comes up with pop-up ads for businesses, which the domain owner says are something that he does for free web hosting. Right now the site is mostly a commentary on the dispute over the domain name.


nissan.com

whois
This dispute involes Nissan Motor Co., and Nissan Computer Corp., a North Carolina-based corporation. Nissan Computer Corp. is owned by Uzi Nissan, an Israeli-American. In addition, "Nissan" means month of April in Arabic and the seventh month in the Hebrew calendar. Uzi Nissan's side of the story is here: http://www.ncchelp.org/.

penguin.org
whois
The domain name was retained by the respondent, an individual nicknamed "the Penguin", who used the domain to publish a personal website. The complainant was Penguin Books, who maintained that the individual's failure to use the domain name to offer a product or service demonstrated that he did not have legitimate interest in the domain. 
UDRP/WIPO Decision
CPT Comment

peta.org
whois
The animal rights group People for the Ethical Treatment of Animals (PETA) brought a complaint under the US Anti-Cybersquatting Consumer Protection Act against the holder of the domain name. The defendant used the domain name to publish a parody site "People Eating Tasty Animals". The US federal court transferred the domain name, ruling trademark infringement and dilution. 
Press release from PETA
People Eating Tasty Animals site

porsche*.*
porschefanclub.com
whois
In this important case in US District Court in Virginia, the luxury car maker Porsche, sought to have 129 domain names containing its trademarks "porsche" or "boxster" transferred to it, seeking relief under the Federal Trademark Dilution Act. In seeking the transfer of the domain names Porsche tried to assert in rem jurisdiction and have all of domains transferred in one ruling rather than bring an action against each domain name registrant. The court ruled that Congress did not specifically provide for in rem jurisdiction under the Federal Trademark Dilution Act. Further, it suggested that even if it did there would be constitutional problems, as the due process clause require in personam judgements when disposing of property.

Though the court rejected Porsche's attempt for a summary judgement against all the domain name holders, it did offer the opinion that Porsche would prevail in in personam actions, saying:

... the mere act of registration creates an immediate injury by preventing Porsche from utilizing those domain names itself in order to channel consumers to its own web site. Customers might try to contact Porsche through "PORSCHE.NET," for example, only to find that they have reached a "dead end" on the Web and then to conclude that the strength of Porsche's brand name is not as great as they first thought.

This opinion is a stronger level of protection for trademark holders with respect to domain names that ICANN's UDRP. For a UDRP panel to transfer a domain name it must be identical or confusingly similar to the trademark, not merely contain the trademark.

Porsche has begun pursuing the domain name holders individually. The domain name registrant of porschefanclub.com, a site that would not likely be confused with an official Porsche site, received a letter demanding it relinquish the domain name.

US District Court Opinion
September 7, 2000 CNN article - Porsche revs up to become master of its domain


pueblo.net
whois
The complainant, a large supermarket chain, sought the transfer of the domain name from a firm seeking to sell a package of domain name and web hosting services to the city of Pueblo. In its decision the panel cited the respondent's conduct as a domain name speculator as the primary reason for transferring the domain name, such actions constituting bad faith and no legitimate interest, despite the offer of web services. 
UDRP/NAF Decision
CPT Comment

pueblo.org
whois
This dispute involved the same complainant as the pueblo.net case but resulted in the domain name being retained by the respondent, a group publishing a guide to the city of Pueblo, Colorado. The panel rejected the request for a transfer of the domain name, maintaining that the .org suffix distinguished the domain name from the trademarked name. From the UDRP opinion:
The Panelist does not understand, nor is he willing to accept, Respondent's concession that its domain name is identical to Complainant's service mark, for it is not when appropriate domain names are considered. This is because a domain name combination must include a top-level domain which can be "com.," "net.," "org.," "gov.," or "edu.," among others. . . . The top-level domain "org" customarily is in usage by non-profit or "miscellaneous" entities and not by a supermarket chain such as Complainant's.

UDRP/NAF Decision
CPT Comment

scientologie.org
whois
The Church of Scientology sought the transfer of the domain name for a website of a splinter Scientology group. The splinter group used the domain name to publish a website that was critical of the Church of Scientology. In a UDRP/WIPO proceeding the panel denied the request to transfer citing legitimate interest on the part of the respondent. The panel held that the rights of the respondent to criticize the Church of Scientology outweighed the right of the complainant with respect to its trademark. The case also involved a number of other interesting issues. For example, the name "Scientologie" was the title of a book 1934, and the domain owner had acquired an exclusive license to market the book. This is a quote from the UDRP decision:
In summary, it is apparent that Respondent separated from the Church of Scientology, whose founder and leader, L. Ron Hubbard, assigned all rights to the trademark SCIENTOLOGY to Complainant. On the other hand, Respondent is holding genuine rights in the German Book entitled "Scientologie - Wissenschaft von der Beschaffenheit und Tauglichkeit des Wissens" which seems to be sharing philosophical roots with the philosophy of L. Ron Hubbard. The copyrights and other rights in this book have been licensed to Respondent by Dr. Nordenholz's heirs, and these rights appear to be even older than Complainant's trademarks. Under these circumstances it cannot be said that Respondent has no right whatsoever and no legitimate interest in the Domain Name. In the contrary, to use the Domain Name as an international platform to disseminate information about Respondent's book and its underlying philosophy appears to be a legitimate interest in itself of Respondent. Accordingly, Complainant has failed to sustain its burden of proof in this respect.

UDRP/WIPO Decision
CPT Comment

shack.com
whois
The complainant, Technology Properties, Inc., owns the trademark "Shack" which it licenses to RadioShack. Technology Properties sought the transfer of the domain name from a private individual. The respondent, nicknamed "Shack", used the domain name to publish a website for his business, DesignShack. The UDRP panel ruled that the domain name was to be retained, citing legitimate interest on the part of the respondent. Of course "shack" is a generic name, and even a US service mark on a use of "shack" is not a exclusive right to all uses of the name.
UDRP/NAF Decision

sting.com
whois
In this case Gordon Sumner, aka Sting, former lead singer of the music group the Police, sought to have to domain name transferred from Michael Urvan, a computer gamer also nicknamed Sting. The single WIPO panelist ruled that the domain name was to be retained because "sting" as a word in common use has other legitmate uses than to identify the singer, despite the complainants contention that :

The name STING has become synonymous in the minds of the public with the Complainant and his activities in the music industry, and serves as a symbol of the goodwill and excellent reputation associated with Sting.
UDRP/WIPO Decision

stmoritz.com
whois
An official organization of the community of St. Moritz" asked WIPO to take away stmoritz.com from a domain owner from the United Arab Emirates. The domain name owner did not bother to contest the proceeding. A lone WIPO panel member rejected the transfer, largely on the grounds that there was no evidence that the domain was being used in bad faith, based upon his own exaimination of the web page and his investigation into the firm that owned the stmoritz.com domain.
UDRP/WIPO Decision

tonsil.com
whois
In this UDRP/WIPO decision the panel ruled that the domain name was to be transferred to a German chemical products firm that had a trademark on "tonsil," which is apparently it uses for products involving bleaching earths and clays. The company claimed that the word tonsil is "an invented word that has no meaning or significance other than to identify and distinguish its products from those of its competitors." Come again? Isn't a tonsil "one of the two glandular organs situated in the throat at the sides of the fauces?" Does a trademark in a generic name in any language trump its use as a generic in all other languages?
UDRP/WIPO Decision

walmartcanadasucks.com
whois
This UDRP/WIPO proceeding resulted in the transfer of the domain name walmartcanadasucks.com (as well as a number of other such domain names containing "walmart") to Walmart. The panel ruled that the domain name was confusingly similar to the complainants trademark, despite the addition of "sucks" to clearly indicate that the site is critical of Walmart.
UDRP/WIPO Decision
CPT Comment

webergrill.com
whois
A small hardware store registered the domain name webergrill.com in order to promote its sales of products made by the complainant. The panel ruled that though the domain name was confusingly similar to the complainants trademark the respondent was making proper use of the trademark in its sales promotion.
UDRP/WIPO Decision
Dale Buss in the Standard, Weber Gets Grilled.

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