Upcoming UDRP decisions

[GeorgeK]

I was checking at:

http://www.icann.org/udrp/proceedings-list.htm

and some interesting cases should be coming in the next month or so. E.g.

- pamelaanderson.com (Alberta Hotrods defending)
- pamelalee.com (Alberta Hotrods defending)
- 12.org (trademark on a number??)
- smurfs.com (email service defending)
- puertorico.com (another waste of taxpayers' money)
- madrid.com (another barcelona.com?)
- bruins.com (top domain holder, CES in Vancouver defending)
- marlboro.com
- bankrates.com (seems generic to me!)

[jberryhill]

As an avid thoroghbred handicapper, I've been thinking it would be great to have a tote board for giving parimutuel odds based on fantasy wagers on pending UDRP's.

Assuming an active respondent, and knowing absolutely nothing about the facts of these cases (none of which are mine), my trackside tip sheet reads as follows:

- pamelaanderson.com (Alberta Hotrods defending)
- pamelalee.com (Alberta Hotrods defending)

...1:10 for the Complainant. Alberta Hotrods has had a number of good wins, but their early winning trend in celebrity name cases has taken a turn for the worse.


- 12.org (trademark on a number??)

1:30 for Respondent. I could see the Respondent lose this if they default, but, come on, I don't see clock makers getting a license for noon and midnight.

- smurfs.com (email service defending)

1:99 for Complainant. Easy win for Blue Man Group Jr., and even kids under age ten know what Smurfs are (if they aren't sucked into tiny Japanese fighting monsters of various stripes).

- puertorico.com (another waste of taxpayers' money)

1:99 for Respondent. Ari is defending the same party who won newzealand.com.

- madrid.com (another barcelona.com?)

1:90 for Respondent. Barcelona.com wasn't well-handled either as a UDRP case or as a court case, and comes up for appeal arguments next month in the fourth circuit. If Barcelona.com was a three-member panel case, it would have gone the other way. Madrid.com is another Ari Goldberger case, and he should be able to win this handily. Only way for Complainant to smell the roses is if the panel carves a universal exception for cities in Spain. However, the domains in Spain are mainly very plain. Ari should point out that the last word in Barcelona.com hasn't been heard yet.

- bruins.com

1:15 for Complainant. Yeah, they are bears, but nobody calls them that. I would expect to see this one show up as "terminated" without a decision.

- marlboro.com

1:99 for Complainant. Marlboro is among the most famous and valuable trademarks on the planet. Respondent's best shot is to argue that the tobacco settlement agreement forbids use of the mark for online advertising of cigarettes, but I doubt they think of that argument.

- bankrates.com (seems generic to me!)

1:20 for Respondent. Difficult not to anticipate a strong "generic" defense.

Now that I think about it, I suppose I could make book on dnbuck wagers on pending UDRP cases, and take a 10% house cut. If anyone's interested, then I'll post a selected number of pending cases and put up a tote board somewhere.

[Ciqala]

John are you sure you're a lawyer???

this is the third post in a row that i have read of yours that was both entertaining and in some way insightful...

I should imagine the media will be most displeased if they were to find out you are putting back all their hardwork on stereotyping lawyers by years...

Ciq

[GeorgeK]

I wonder who the Complainant is for the bruins.com case? There's the Boston Bruins of the NHL, for example. But, aren't some other college sports teams called the "Bruins", e.g. UCLA??

[edisaacson]

John,

If you'll put up a wager board count me in. Since giving up betting on college football I need a new outlet.

[jberryhill]

"I wonder who the Complainant is for the bruins.com case? "

That's also a fun thing to try to guess from the pending lists, but the identity of the complainant is not available information. Sometimes it isn't whom you think it might be. For words that are incidentally the names of sports teams, sometimes it is the team, sometimes the league, or sometimes a licensing agency. Even where the subject matter of the dispute related to the team, there are UDRP decisions which have turned on just which entity was the complainant. Also, as you point out, it could be some other claimaint in the term "bruins" anywhere on the planet.

See, eg. knicks.com - decided for respondent, because NBA Properties was deemed the "wrong" complainant:
http://arbiter.wipo.int/domains/deci...2000-1211.html

[draqon]

can someone explain to me how to interpret the odds? like what "1:30 for the respondent" means?

[RON2]

"1:30 for the respondent"

If I understand betting right, that means there's only a 1 in 30 chance the complainant is going to win

or if you bet on the complainant you win 30$ for every $1 you bet
or if you bet on the respondant you win $1 for every $30 you bet

[MaadMaax]

is for marlboro.com going to respondents way.

IF.. the panelist(s) are non smokers and are from marlboro, NJ, or Marlboro college educated

[jberryhill]

"or if you bet on the respondant you win $1 for every $30 you bet"

That's what I mean... $30 bet pays $31. But these are "morning line" probable odds and not based on a parimutuel pool. If I were to book these, at least one person would have to be taking action on each side with a 10% cut. I would also have to apply "dollar breakage" instead of the usual "dime breakage" since there is no way to make change from dnforum bucks. Hence, a $2 ticket might pay $2 minimum instead of $2.10.

"can someone explain to me how to interpret the odds?"

For more information, or evidence of my mis-spent youth, go to www.drf.com.

Even the Form plays:

http://arbiter.wipo.int/domains/deci...2001-1032.html

[pljones]

George, I've been watching the same cases.

I expect that pamelaanderson.com and pamelalee.com will be awarded to Ms. Lee.
12.org- trademark on a number?? is right, who filed this case?
Smurfs.com - should go to the complainant, but the use of the site is interesting

puertorico.com - Good luck Ari, I agree, this case should go to the registrant

madrid.com- Request a 3 member Panel & cite all the cases that have said no protection for city names (except for Barcelona.com), this should be a winner for the registrant.

bruins.com- Who did file this case? This one is interesting, and it really does depend on whether its the NHL, UCLA or a lesser known group.

marlboro.com- slam dunk win for Philip Morris

bankrates.com- this looks generic to me too, and I hope the registrant defends

I'd add to that list: realtors.biz, hottopics.com, ceofunds.com, doggpile.com, jobfinance.com, mytech.com, ataglance.net, and mgk.net.

[Banned: timechange.com]

1. You can trademark your aunt on a skinny horse - it's possible
2. I own xii.us (12 in latin numbers); should I sh!t my pants?

[jberryhill]

"Smurfs.com - should go to the complainant, but the use of the site is interesting"

I mentioned that I didn't look into issues of use, etc., that can be determinative. It is fun to simply call them based on the name. Other things I haven't looked at include the relative dates of registrations of tm's and domain names, whether the whois data looks crummy (sometimes I peeked), and the usual load of superficially obtainable, but potentially determinative, facts:

- realtors.biz

1:75 for complainant

A lot of people are under the mistaken impression that "realtor" is a generic word. It is not. It is a certification mark owned by the National Association of Realtors, and not every real estate agent is permitted to call him or herself a "realtor". Even if the domain name is owned by a licensed realtor, then that realtor is bound by the licensing terms imposed by the NAR (and they are edgy about domain name use).

- hottopics.com

1:1 dead heat

Great descriptive name for a site relating to current affairs. Also the name of a "goth" clothing store chain (as I found when shopping for a Christmas present for my teenage niece). We don't know who the complainant is, what facts may have transpired, or if the respondent will defend. Photo-finish here, maybe with the respondent getting a nose across the wire.

- ceofunds.com

1:6 for complainant

Apparently a Canadian family of mutual funds managed by Hirsch funds, and a Canadian registrant who is going to need a good reason.

- doggpile.com

1:50 for complainant

Dogpile, the search engine, meet Doggpile, the brain-damaged pay-per-click affiliate.

- jobfinance.com

1:2 for respondent

Probable default in the works, though, due to a Thai address for the registrant.

- mytech.com

1:7 for respondent

Another CES Marketing case, another CES Marketing win. Go get 'em Ari.

- ataglance.net

1:8 for complainant

With .net names, you go to the .com in order to play "guess the complainant".

- mgk.net

1:4 for complainant

I love three-letter disputes. I'd give better odds to the respondent if there was a web page to go on here (but you never know what people have been planning), or better whois data. Contrary to the rule stated above, I first guessed the complainant is Philadelphia radio station WMGK, merely because it is the first thing a Philadelphian thinks upon hearing the letters "mgk". However, if you look at the .org, you see that the mgk.com folks are trying to collect the whole set. I'm giving the complainant the edge based on their (weak) stylized tm registration and the respondent's screwy whois data (you'll see that wxn.net claims to be on rodeo drive in Beverly Hills).

[MaadMaax]

Have you or any of your colleagues/friends actually attended one of these hearings in person either at wipo or arb locations?

If it's a three panel request, are the three panelist making a decision sitting face to face?


In a court room, if i'm not mistaken, if a lawyer sees a judge slacking off, he can call for a mistrial?


How effectively are these retired judges executing their duties? is it something one should care?

[pljones]

MaadMaax,

To my knowledge, there has never been a live, in-person UDRP hearing. The process was designed to take place over 45-60 days through paper/e-mail filings, and not to be a long drawn out court procedure. Panelists probably discuss the case between themselves over the phone and via e-mail.

The dispute providers are responsible for training panelists to handle UDRP cases. Some panelists are retired judges, some are trademark attorneys. All who participate as panelists are supposed to abide by a code of conduct (or something similar) and act as neutral deciders. I think that generally they accomplish this and treat both sides fairly.

[Ari Goldberger]

The Bruins complaint was filed by the NHL team.

[Drewbert]

>I think that generally they accomplish this and treat both sides fairly.

Cough, hack! I'm sorry??

Complaint excerpt:

Complainant has vigorously protected the trademark ABSOLUT against
unauthorized use by third parties. U.S. courts have recognized that the
trademark ABSOLUT is entitled to protection against infringement under U.S.
law. See Exhibit H. For example, a U.S. court recently found that the
trademark ABSOLUT is an "extraordinarily strong" trademark and "famous."
See Exhibit H (V&S Vin & Sprit Aktiebolag v. Pusher, Inc.). Further, a NAF
panel recently held that Complainant's trademark ABSOLUT is a "famous
trademark with no non-trademark significance."

Response excerpt:

In Paragraph 19 of the Complaint, Complainant alleges that ABSOLUT is a famous trademark with no non-trademark significance. Referring to any quality German dictionary proves this to be incorrect. Appendix 2 and 3 of this Response show this...

(and)

15. Upon investigation, there are currently approximately 4100 .com domains that begin with the german dictionary word "ABSOLUT" and 3500 that begin with the english dictionary word "ABSOLUT". A search at the Altavista search engine for the english word "ABSOLUTE" returns 6,739,125 pages that mention that word. The word "BEACH" returns 7,648,490 pages. The german word "ABSOLUT" returns 267,992 pages. The first ten sites for "ABSOLUT" include the Complainant's website at http://www.absolut.com - thus discounting Complainant's claim that surfers searching for "absolut" would arrive at absolutbeach.com and get confused. Other sites in the top listings include:

a. "Absolut Sportlich" - A german sporting goods company located at http://www.absolut-sportlich.de

b. "Groupe absolut" - A french design company located at http://www.absolut.fr - implying that absolut is not only a german dictionary word but a french one as well

c. "Absolut System" - A portuguese media agency located at http://www.absolut-system.pt - implying that absolut is not only a german and french dictionary word but a portuguese one as well

d. "Absolut Technologies" - A Brazilian software/hardware manufacturer located at http://www.abs-tech.com - backing up the case for absolut having a meaning in Portuguese

16. For the Complainant to hence claim that "absolut" has no meaning outside it's TM raises concerns about its integrity. To claim to have sole rights to every domain name that includes the word "ABSOLUT" is nothing short of greed and possibly confusion of it's global status.

APPENDIX 2. Printout from an online dictionary/translator showing response to a request to translate the German word ABSOLUT into English

url = http://www.wordreference.com/de/en/t...p?deen=absolut

absolut [apzolut]
1 (adj) (alle Bedeutungen) absolute;
(völlig auch) complete, total; ;
2 (adv) absolutely;
das ist ~ unmöglich, that's quite {or} absolutely impossible;
~ genommen {or} betrachtet, considered in the absolute;
ich sehe ~ nicht ein, warum..., I just don't understand why....
Absolute [apzolut]
(nt) (decl as adj: Philos) Absolute, absolute.

APPENDIX 3. Printout from an online dictionary/translator showing response to a request to translate the English word ABSOLUTE into German

http://wordreference.com/de/Translat...?ende=absolute

absolute [æbslut] (adj) absolut;
(power, monopoly, liberty, support also, command) uneingeschränkt;
(monarch also) unumschränkt;
(lie, idiot) ausgemacht;
the ~, das Absolute;
~ majority, absolute Mehrheit;
~ pitch, absolute Tonhöhe;
(of person) absolutes Gehör;
~ zero, absoluter Nullpunkt;
the divorce was made ~, die Scheidung wurde ausgesprochen.
-The Collins Large German Dictionary © 1999 HarperCollins Publishers

Decision excerpt (emphasis added):

The Respondent's registered domain name <absolutbeach.com> is confusingly
similar to the Complainant's U.S. federally registered trademark ABSOLUT.
Adding the word "beach" does not mitigate that confusion, particularly where
as here, the remainder of the domain name, ABSOLUT, is a famous trademark
****with no non-trademark significance****.

NAF panelists ignore any evidence that doesn't fit their desired outcome. Not having complaints and responses available for public perusal allows this to occur.

[jberryhill]

"Have you or any of your colleagues/friends actually attended one of these hearings in person either at wipo or arb locations? "

It's all done on paper. Three-member panels meet by telephone. I have represented quite a few UDRP respondents, as have Ari Goldberger, Steve Sturgeon and Howard Neu. If we can get Zak Muscovitch in here, then we'll have a collection of probably the most experienced group of attorneys in this area.

[jberryhill]

"Cough, hack! I'm sorry??"

"Generally" fair does not mean that there are no bad decisions. Some of the bad ones are real howlers, but most of the cases are no-brainers.

[fizz]

Very insightful thread - thanks guys.