The Spanish company, FCC Fomento de Construcciones y Contratas, had alleged in a WIPO Complaint that the current owner of FCC.com had no legitimate rights in the domain name and was using it in bad faith.

FCC.com was represented by well known domain lawyer John Berryhill, who submitted a lucid masterpiece as his client's defense.

To obtain the rights to a domain name under ICANN's Uniform Dispute Resolution Policy (UDRP), the complainant must prove the following three elements:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
2. The respondent has no right or legitimate interest in respect of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith.

The WIPO panel, consisting of Tony Willoughby, Manuel Moreno-Torres and Nelson A. Diaz, ruled that…

1. FCC.com is indeed identical or confusingly similar to a trademark in which the complainant has rights. (John Berryhill argued that the complainant's name is a trade name and not a trademark, and in Spain there are no common law rights that automatically give trade names the status of a trademark.)
2. However, the respondent does have rights or legitimate interest in FCC.com because he is using the domain with a bona fide offering of goods or services, in this case a news aggregation services on issues related to the Federal Communications Commission.
3. The domain is therefore not being used in bad faith.

Finally, the panel decided that the complainant abused the Administrative Proceeding because it is "obvious" that FCC.com is a legitimate site and that a complaint was therefore bound to fail. The complainant did not even include a printout of the FCC.com website, which according to the panelists cannot be explained by 'innocent' ineptitude or incompetence, but appeared as a high stakes gamble to play the system and trick the panel into a favorable decision. For in some cases, if a respondent fails to respond to a UDRP complaint, some panelists – unjustly so – do not even look at the website in question and issue a default ruling in favor of the complainant.

It's worth reading the full decision as a splendid example of a landmark case that should serve both as a warning to potential reverse hijackers and a symbol of well-deserved relief for domain name owners around the world.

Jan Geirnaert, an IT consultant, is the author of Skype blogs Skype-Watch (Skype-Watch.com) and Skype-Gadgets (Skype-Gadgets.com). That is, he was the author of the two Skype blogs. Jan was also passionately pro-Skype. He aided marketing efforts for dozens of Skype–affiliated companies, briefed executives on the potential impact of Skype on their businesses, covered Skype-related news at international conferences and contributed to Skype Journal.

Then, Jan received a letter from Seema Sharma, an IP lawyer for Skype. Ms. Sharma was forwarded an email from Jan regarding his use of the Skype name in his decidedly pro-Skype blogging. She did what many IP lawyers would do. She pulled up her standard “cease and desist” letter, pasted his name and websites into it, and mailed it off.

This is not an entirely unexpected action on the part of any company’s legal staff. However, Jan took this to be a personal affront to his work in the trenches for the company, as his post here would indicate. So, Jan immediately took the letter to heart. He pulled all content from his blogs and posted the letter’s boilerplate legalese instead.

The news of Jan’s actions has made its way through the relatively small Skype-blogging community. Reactions vary from righteous indignation to the more understated “I think he over-reacted.” At Robert Scoble’s Scobleizer, the tone begins decidedly offended but later softens to a stance that, while Skype could have handled the situation better from a Public Relations standpoint, Jan’s immediate shutdown was probably also over the top. The comments, in general, echo this sentiment with some suggesting that a licensing arrangement could have been arranged for a trivial fee.

So, what do you think? Not only in this Skype case, but on the whole? If a domain owner is passionately working to promote a company’s name and product but is violating its trademark policy in the most literal sense, how should a company approach that person? Is there a possible win-win arrangement? If a blog is “under the wing” of a company, could you trust their opinion and should they divulge their arrangement?

The defendant, even though his response turned out to be irrelevant, asserted that Google didn't have any rights to Googles.EU, primarily because "Google" doesn't equal "Googles" and because the GOOGLES trademark is registered to other unrelated companies.

It is likely that Google will simply refile the case with the required documentation. The fact that the defendant uses Googles.EU for a search-related website that interfaces with the actual Google search engine will likely be his downfall. He has even decorated the website with a logo that uncannily resembles the well-known Google logo, which could be a clear sign of "bad faith", one of the factors considered by the arbitration center when evaluating a case.

Thanks to DomainNews and DomainTools.

But this month the county made the news because two of its candidates for the position of Controller clashed in a domain dispute.

Democratic candidate Melinda Kantner filed a complaint with the election board alleging that her opponent, Republican Jason Gherghel, violated the Pennsylvania Election Code when he registered a domain name bearing her name – MelindaKantner.com – preventing her from using it for her own electoral purposes.

The domain was not merely registered; it actually redirected visitors to Gherghel's own website JasonGherghel.com

When Kantner became aware of the stunt, Gherghel tried to hide his involvement by protecting the domain's whois data using the privacy services of GoDaddy's DomainsByProxy service.

During a telephone interview Thursday, Kantner said:

My opponent is touting his credentials and integrity, but I just feel that if he had any decency and integrity about him, he would do the responsible thing and relinquish my name and apologize.

Gherghel responded by claiming that registering and using an opponent's Internet address is a "common practice":

It's a tool a lot of politicians use, but I don't need it so it's easy for me to just give it up.

However, he claims, Mrs. Kantner turned down the offer.

He even added, "If she calls, I'll give it to her. If she doesn't call, I'll probably just abandon it." And that's what he has apparently done – the domain now displays a PPC links page monetized by domain registrar GoDaddy. Gherghel still has exclusive rights to the domain until its expiration date in March 2008.

The Kantner complaint requests the Election Board conduct "a full investigation "with the results to be referred to the County District Attorney for a determination of possible criminal action.

The full text of the complaint is available here. It's a funny read because of the arcane language used. And they actually mislabel an address bar type-in as an "Internet search".

The lesson? Everyone, and certainly everyone in the public eye, should preemptively register their own domain name. Melinda Kantner and Australian politician Morris Iemma are just some of the individuals who had to learn this lesson the hard way.

A few days ago, the US government agency responsible for tax collection and tax law enforcement reminded the public that its official website address is www.irs.gov – and not .com, .net or .org.

And the U.S. House of Representatives just passed a bill ("Taxpayer Protection Act") clarifying that existing law, which prohibits the commercial use of Treasury Department names and symbols in a misleading way, also applies to the Internet, including domain names!

Here's a quote from the bill:

(a) In General- Subsection (a) of section 333 of title 31, United States Code, is amended by inserting `internet domain address,' after `solicitation,' both places it appears.

The amended Section 333 of Title 31 now reads as follows:

(a) General Rule.— No person may use, in connection with, or as a part of, any advertisement, solicitation, internet domain address, business activity, or product, whether alone or with other words, letters, symbols, or emblems—

(1) the words “Department of the Treasury”, or the name of any service, bureau, office, or other subdivision of the Department of the Treasury, [...]

There are two main targets of this coordinated action:

1. Phishing and identity theft sites which mimick the IRS site to gain access to private taxpayer information such as social security numbers and bank account details.
2. Websites that intentionally resemble the IRS's website and offer commercial tax filing services, such as IRS.com

IRS.com is owned by publicly listed Intersearch Group, Inc. (IGO), which issued a press release to "denounce false news reports":

InterSearch Group, Inc., a leading operator of industry specific destination portals such as www.IRS.com, www.Banks.com, and www.Camps.com and provider of Internet search services, today denounced erroneous news reports falsely attempting to link its independent tax-resource website – IRS.Com – to tax "scams" or other illegal activities and demanded that news outlets who disseminate such information correct their false statements.

However, the "Taxpayer Protection Act" is not limited to scam sites and could also be applied to commercial sites such as IRS.com, which repeatedly came up during yesterday's floor debate. In fact, the domain name IRS.com might be incriminating all by itself because in the minds of some Internet users, IRS.com could create the impression that it is owned by the IRS.

It remains to be seen whether these developments are more than the usual tax-season propaganda ("we're doing something to protect you online so you can feel more comfortable handing over a large part of your income").

What do you think… will the US government use this bill to try to cancel or even confiscate domains such as IRS.com to protect its interests?

Daniel Giersch, who named G-Mail after himself and applied for a German trademark as early as 2000, won a permanent injunction against Google earlier this year, preventing the company from offering Gmail.com email addresses to users with a German IP address.

In Germany, Gmail.com is now known as GoogleMail.com, at least for the time being. A Google representative said:

Google will take the action it deems necessary to protect our interests in Europe.

Giersch is not giving in:

I want this to stop, but not by giving up. I want this to stop only by shutting down Gmail.

Even a $250,000 offer could not convince Giersch to hand over his trademark. His lawyer, Sebastian Eble, said in a recent interview (mp3 file, interview starts at 07:49) with Out-Law.com:

Daniel is a millionaire so you know, €250,000 [sic] is for Daniel not a big amount of money and on your other hand his aim or his goal is to do big business with this G-mail trademark. G-mail is a little bit like Daniel's baby so it was never a question for him to sell his trademark. [...] Even if they would, I don't know, offer him millions I do not think that Daniel would sell it because it is like his little baby, Giersch-mail, so it is named G-mail.

Google had to discover the hard way that this conflict is no longer just about money – it is also about human relations. When Giersch originally heard about Google's beta testing its own Gmail in 2004, he decided to contact them to discuss potential cooperation, but was rebuked.

What does the Archive.org record of Gmail.de have to say about the dispute?

Google first announced Gmail on April 1, 2004. Shortly thereafter, on May 20, 2004, Gmail.de was still being redirected to the Crystal Palace BBS (CPP.de), which apparently no longer exists.

On Oct. 9, 2005, the site went offline and started displaying the following message:

Welcome to Crystal Palace BBS (www.cpp.de)

We make some software-updates… will be back soon..

Thanks for visiting..

At some time between May 29, 2005 and Nov 04, 2005 Gmail.de became a site of its own, announcing the development of a hybrid email and postal mail service. Just in time! Under German trademark law, an applicant has five years to actually start using a mark commercially.

Emboldened by his victory in Germany, Giersch is now also pursuing his plans to protect his G-mail trademark and challenge Google in Norway, Switzerland and Monaco where he hopes to expand his electronic postal delivery business.

Daily Domainer comments:

Looks like Giersch has the upper hand under German law, even though he didn't start using Gmail.de for email related services until 2005. From a domainer's point of view, the market value of Gmail.de (including trademark) is easily in the eight figures ($XX,XXX,XXX) and its value will only appreciate over the years. While Google's measly $250,000 offer looks like a joke, it's very likely that they did not want to set a precedent by making a higher offer for a domain. After all, Gmail.co.uk, Gmail.pl, Gmail.ru, Gmail.in, Gmail.es, Gmail.com.mx and Gmail.com.ar are just a few of the Gmail domains that are not under Google's control… yet.

Domain Works had registered Fools.com in 1998. The company had initially redirected the domain to its corporate website and later set up a pay-per-click portal to earn advertising revenue.

Motely Fool Inc. owns U.S. trademarks such as THE MOTLEY FOOL and FOOL.COM, and – incredibly – trademarks for the generic words FOOL and FOOLISH.

The company's lawyers Cooley Godward Kronish LLP argued before WIPO that Fools.com is substantially identical to two of its marks (FOOL.com and FOOL), the only difference being the addition of an ‘s’.

To gain control of a domain name, UDRP rules require a complainant to prove the following three elements:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. (WIPO, which in accordance with UDRP rules acts as willing executioner of even the most obviously flawed trademark registrations from around the world, decided that Fools.com is "confusingly similar to a trademark in which the Complainant has rights".)
2. The respondent has no right or legitimate interest in respect of the disputed domain name. (In light of the Panel’s finding under the third point, WIPO found it unnecessary to make a finding in relation to this issue.)
3. The disputed domain name was registered and is being used in bad faith. (WIPO's assessment: "[...] the Respondent’s position is that in 1998 when it registered the Domain Name it did not have the Complainant in mind and indeed could not have done so, because at that time it was unaware of the rights claimed by the Complainant in the marks FOOL and FOOL.COM. While it is possible that the Respondent is not telling the truth and, being an expert in the field of the Internet, was aware of the Complainant’s website at “www.fool.com” and was aware that in 1997 that site had been nominated for a prestigious Webby Award when it registered the Domain Name, it is for the Complainant to prove it to the satisfaction of the Panel. [...] The Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith.")

WIPO rejected the complaint and while the Daily Domainer applauds the decision, we once again have to point out the flaws in the UDRP's "bad faith" clause. The WIPO panel decided that Motley Fool Inc. had not proven Domain Works' awareness of the company's trademarks at the time of Fools.com's registration.

But how do you prove, or disprove such a thing? Other WIPO panelists, faced with similar challenges requiring telepathic hindsight, often come to an opposite conclusion based on random hunches and mental projections.

Who cares about a registrant's intentions and of his level of awareness at the time of domain registration anyway? Things that cannot be proven either way should be eliminated completely when judging the "bad faith" component of a domain dispute. WIPO even notes tongue-in-cheek that the respondent might not be telling the truth… but what would you expect him to say under these Big Brother rules where thoughts are crimes and honest admission of the truth results in the guaranteed loss of valuable assets?

We look forward to the day when a domain owner can openly say, "Yes, I was aware that they had a similar trademark but it didn't affect me because I had no plans to compete with them". If Domain Works had set up an investment advisory site, appropriated the Fool.com logo and republished articles from their site (similar to the YouTube.cl case), that would be clear proof of bad faith. But elusive thoughts someone had (or didn't have) nine years ago should not be taken into consideration at all.

In summary, Motley Fool has to be chided for this ill-fated attempt to hijack a domain name without compensation. They are certainly no fools; they openly tried to play the system and failed only because the WIPO panel came to the conclusion that there was no evidence that the domain registrant had been aware of the company when he registered the domain.

Also, it may be obvious but we reiterate that fool is a generic word, as is its plural fools. Motley Fool should have never been approved for a trademark over fool, especially if they now try to abuse this registration to rip off domain owners by stealing their domains without paying a fair price.

The issue at stake in this confrontation is whether Andrés Chapero, the man who registered YouTube.cl with knowledge of the North American website YouTube.com should have to give up the domain because it was registered in “bad faith”. According to YouTube, Chapero absolutely should hand over the domain.

Chapero, on the other hand, says he absolutely should not have to give up YouTube.cl domain because he registered the domain in early 2006, before YouTube.com had gained worldwide popularity. Plus, Chapero claims that as early as 2005, he had asked YouTube North America if they were interested in cooperating with him to reach Chilean audiences. He says YouTube North America basically told him “no,” saying they only wanted to focus on North America. According to Chapero, YouTube had its chance to get in on the Chilean market and they didn’t take it.

One could argue that since YouTube North America knew that Chapero was interested in having YouTube in Chile that they could have taken the precautionary measure of registering the domain YouTube.cl themselves. But the decisive point here is that Chapero registered YouTube.cl in full knowledge of the existence of YouTube.com and is even using the domain to aggregate Chile-related videos from YouTube.com. If that's not bad faith then what is? (Let us know your thoughts.)

There has yet to be a decision on this case but persons holding Chilean variations of the YouTube name such as YouTubeVideos.cl, Youtube-videos.cl, and Youtubechile.com have already given up their domains. Will Chapero follow or will he wait until YouTube proceeds with the threatened lawsuit? Only time will tell.

According to Alexa, YouTube.cl is the 383th most popular website in Chile.

Read more about this issue here and here (both in Spanish).

As the Daily Domainer reported last month, Microsoft is Quietly Making Untold Millions by hijacking non-existent domains, including those that violate trademark laws, to its Live search engine, where the trademarked terms are monetized through PPC (pay per click) ads.

The primary target of Microsoft's barrage of lawsuits is domain taster Maltuzi LLC, a company that tests hundreds of thousands of domains for traffic and revenue each month with the goal of keeping only profitable domains.

Maltuzi's domains are monetized through Oversee.net/Domainsponsor, which primarily uses Google's PPC feeds, thereby generating unknown amounts of revenue for Google.

The legal brains at Microsoft have thought this through very well. Microsoft cannot be accused of cybersquatting, even though they do it all the time by automatically and indiscriminately generating PPC-filled results pages for a virtually infinite number of non-existent domains.

However, if a company complains about Microsoft profiting from their trademark, Microsoft can simply respond, "If you don't like it, just register the domain!". By registering the domain, of course, the trademark owner would gain immediate control over it and Microsoft would be off the hook.

Therefore, it is in Microsoft's best interest to pounce upon competing cybersquatters who currently use Google and Yahoo to monetize their domains. By doing so, Microsoft harms both Google and Yahoo and boosts its own PPC income.

If they can root out cybersquatters by attacking them in court and encouraging others to do the same, Microsoft will be able to effectively monopolize profits from trademarked domain typos.

The only thing that could reverse this trend would be for trademark owners to sue Microsoft, Earthlink, Charter and others for profiting from trademark domain typos. If Microsoft is not reigned in, cybersquatters will in turn respond by downsizing and splitting up their operations and setting up shop in offshore countries, and thereby becoming less of a target.

It is important to note that most domainers are not interested in cybersquatting. Domainers buy, sell, monetize and develop domains in general, while cybersquatters register trademarked domains and typos thereof with a goal of diverting traffic from the trademark in question in order to make a profit.

As Chris Bayiokos said yesterday:

There are still plenty of people who label anyone who owns a domain name a cybersquatter. I think time is the key for legitimacy, just like with any other 'discrimination.' If someone can buy up tangible earth and sell it for a profit, then domain buying and selling should get by easy.

The issues:

The number of cybersquatting disputes filed with the World Intellectual Property Organization (WIPO) in 2006 increased by 25% as compared to 2005.

WIPO sees this as evidence that cybersquatting is on the rise. However, so is Internet usage and domain name ownership in general. Additionally, in its Proposed Program and Budget For 2006/07 WIPO congratulates itself that its own awareness-raising activities (!) are at least partially responsible for the increase in UDRP cases:

It is estimated that in 2006/07 the income of the Center will be around two million Swiss francs, of which almost 1.5 million Swiss francs is for UDRP procedures (at an estimated rate of three new cases per day). A gradual increase in the number of Arbitration and Mediation procedures is also expected, based on an expected increase in the types of intellectual property transactions that lend themselves to resolution through procedures other than court litigation, and a continuation of the Center’s awareness-raising activities. [emphasis added]

WIPO's press release continues:

Practices such as ‘domain name tasting’ risk turning the domain name system into a mostly speculative market. Domain names used to be primarily specific identifiers of businesses and other Internet users, but many names nowadays are mere commodities for speculative gain. The rate at which domain names change hands and the difficulty to track such mass automated registrations challenge trademark owners in their pursuit of cybersquatters. With domain names becoming moving targets for rights holders, due consideration should be given to concrete policy responses.

At least in theory, domain tasting allows registrants to continually register, drop and re-register trademarked domains under different identities, making it difficult to track who actually owns the domain.

But is this actually happening on a large scale? Most large domain tasters seem to taste for the purpose of finding profitable domains that they can actually keep. To stop domain tasting almost entirely, all it would take is to get VeriSign (which remains unmentioned in the press release) to charge a $0.05 fee for each deletion.

In 2006, a total of 1,823 (gTLDs and country code Top Level Domains (ccTLDs)) complaints alleging cybersquatting – the abusive registration as domain names of trademarks – were filed with WIPO’s Arbitration and Mediation Center (Center), representing the highest number of cybersquatting cases handled by WIPO since the year 2000.

As stated, the number of annual cases isn't even back at 2000 levels yet. Here are the actual numbers:

2000 – 1,857 cases
2001 – 1,556 cases
2002 – 1,208 cases
2003 – 1,100 cases
2004 – 1,176 cases
2005 – 1,456 cases
2006 – 1,823 cases

WIPO then describes how recent developments in the domain industry have contributed to the perceived problem of mass registrations:

The combined effect of developments such as: the use of ‘Whois’ privacy services for registrations; the growth in the number of professional domain name dealers and the volume of their activity; the use of computer software to automatically register expired domain names and their ‘parking’ on pay-per-click portal sites; the option to register names for free for a five-day ‘tasting’ period; the growth in the number of accredited registrars; and the establishment of new gTLDs, is to create greater opportunities for mass registration of domain names. Such registrations are often anonymously undertaken on a serial basis without particular attention to third-party intellectual property rights. Traditionally, cybersquatting involved the registration of domain names by individuals seeking to sell the ‘squatted’ domain name. Nowadays, ‘domainers’ derive income from the large-scale automated registration of domain names. They acquire domain name portfolios, buy and sell domain names, and park domain names, claiming a significant share of the well over 100 million domain names that are now registered.

Yes, all of this is happening. But only an infinitely small percentage of domainers is involved in cybersquatting. Millions of domains are registered each year, and the – by comparison – ridiculously low number of UDRP cases (1,823 last year) shows that cybersquatting is only a very minor problem that is more than adequately addressed with current policies and procedures.

There is a rapid growth of domain parking sites, on which links to other sites are organized and indexed. These links usually operate on a ‘pay-per-click’ basis with registrants and parking services sharing revenue generated by web traffic.

WIPO conveniently fails to mention Google and Yahoo, who are the main beneficiaries of parked domain traffic. An estimated 10% to 15% of Google's ad revenue is generated through parked domains. Nevertheless, only a very small percentage of these domains falls under the "cybersquatting" category. Microsoft is more aggressive and is Quietly Making Untold Millions by diverting typo traffic to their search engine.

Increasingly, service providers are offering Whois privacy services allowing domain name registrations to be made through a proxy registrant, which is often a registrar-related entity. One reason for such identity-shield developments is to avoid registrants receiving ‘spam’ as a result of their contact details being made publicly available on the Whois database. WIPO panel decisions are beginning to explore the practical implications for the UDRP of these developments, for example in terms of whether or not the privacy service discloses the identity of its client once the service has been alerted to concerns of trademark infringement. The fundamental assumption of the UDRP is that the formal respondent for case purposes is to be found in the applicable Whois database.

It should be up to each defendant to decide whether to ignore the proceedings, to respond under the protection of anonymity, or to identify himself when responding. Each case should be judged on its own merits and the burden of proof should be upon the complainant.

The "bad faith" component of UDRP proceedings is a joke anyway and usually results in WIPO panelists trying to divine the thoughts in the head of a registrant at the time he registered a domain. This often creates the both Kafkaesque and Orwellian impression that a panelist first makes up his mind about a case and then retroactively projects his conclusions into the registrant's head at the time he had made the registration, and finally uses these "findings" to support his decision. (See "Think The Wrong Thought – Lose Your Domain?")

In summary, WIPO's press release is sensational and prone to misinterpretation. It raises some interesting points but fails to offer any solutions, which would actually be quite simple. Concerned about domain tasting? Tell VeriSign to introduce a $0.05 deletion fee or simply try to "press-release" Google and Yahoo into stopping the monetization of domains that are less than 5 days old. Concerned about cybersquatters? Continue to encourage those who believe they have been victimized to file a UDRP case. UDRP works well enough for many cases, despite serious shortcomings such as the "bad faith" clause which might be fixed in the future.

Most domainers are not interested in cybersquatting and probably resent WIPO for painting them with the same broad brush, and take pleasure in ridiculing those clueless mainstream reporters who misunderstand the issue.