Wargames .com: War Over

[companyone]

Hi,

Arbitration board rules military games operator can keep his domain name.
February 6, 2007

By Alexandra Berzon

A well-publicized saga over the fate of the Wargames.com domain name concluded Tuesday when an arbitration board ruled against MGM, allowing a military games seller to continue operating his Web site under its current name.

MGM had filed a complaint in December arguing the studio owned the rights to Wargames.com based on the popular 1983 film, which featured a young Matthew Broderick as a hacker who almost starts a world war via his computer. The studio is planning a much-later sequel with cyber-terrorists taking the place of the Russian military.

The complaint was one of thousands of domain name disputes filed last year, many of which were never challenged. MGM recently won cases to win back Pink Panther and Rocky Web sites, according to the National Arbitration Forum. In both those cases, the domain name owners never filed briefs to represent their side, and the names were given back to MGM.

Last week, a panel ruled against a swine company that was trying to take the pig.com domain name on the basis that they owned the trademark for PIG. The judges ruled that the pig.com website was based on the dictionary definition of “pig”, not the New Pig Corporation’s trademark.

In the case of wargames.com, MGM was up against Rogers Cadenhead, an Internet publisher who claimed he legitimately bought wargames.com to start a business selling military games.

“To me, if you go to a site called wargames.com, you expect to find war games. I don’t think you expect to find a 24-year-old film, but then again I’m a big geek,” said Mr. Cadenhead, who told the court his enthusiasm runs so deep he once invented and sold a war-themed game that was never published.

A lawyer for MGM did not respond to calls for comment.

Mr. Cadenhead said he owns upwards of 60 domain names that he’s bought with plans to publish, not sell. That includes names like drudge.com, which he publishes as The Drudge Retort, a parody and counter to the popular Drudge Report. He also bought BenedictXVI .com, a name he donated to charity after seeing hundreds of thousands of hits the day the new pope announced his new name.

MGM filed Wargames as a trademark with the U.S. Patent and Trademark Office three years after Mr. Cadenhead bought the domain name for wargames.com. Even so, the arbitration panel ruled, MGM could still have the rights to the name if it could show Mr. Cadenhead was cyber-squatting—buying up domain names based on another company’s products or names, only to sell them. That’s against the law.

And Mr. Cadenhead looked vulnerable. He didn’t begin operating a military games Web site on wargames.com until after he received a letter from MGM demanding that he give back the name, although he submitted evidence to the court claiming to prove he had been developing the site for several years. He had also registered names for Rocky sequel movies on the same day the sequels were announced, which looked suspicious. He told the court he did that only to prevent them from getting in the hands of porn producers and gave those names to MGM as soon as the studio asked for them.

After receiving hundreds of pages of documents, the National Arbitration Forum decided Mr. Cadenhead had produced sufficient evidence to show that he legitimately wanted to use the site for his own purposes—and not just to trade off the popularity of the Wargames movie.



“The picture that emerges from this material is of the Respondent, having seen Complainant’s WARGAMES movie as a teenager…and having developed a professional interest in computer programming and wargames…registered the disputed domain…with the idea of one day using it to sell wargames over the Internet,” wrote the Forum panel.



Mr. Cadenhead has written numerous books on computer programming, and he said his next book is going to be about the domain name dispute process. He ended up spending $5,000 fighting the dispute, but with all the free publicity he’s earned (4,791 links to wargames.com since the case was filed in December) he’s posed to make that back.


“I was holding onto the site until I really liked it and was ready to completely launch it, but in retrospect I would have put it online, even half-assed, and worked on it in real time,” said Mr. Cadenhead.

Source

[labrocca]

A close one and another one that shows the Panel is looking to see if the respondent is a "domainer" that does nothing but squat on names. It's very dangerous to park your names or not to develop them.

[DNQuest.com]

The one thing that may have single handed saved him was showing he was in the process of developing the domain, or he may have lost. Still, 7 years to develop, what was he waiting for???

And yes, Labrocca and I agree again (it's af reakin love feast now LOL)

[rcade]

The one thing that may have single handed saved him was showing he was in the process of developing the domain, or he may have lost. Still, 7 years to develop, what was he waiting for???

Free time. I publish sites at cruel.com, drudge.com, sportsfilter.com and cadenhead.org. Between them, my family and All My Children, I wasn't able to begin work on wargames.com until 2004.

That's one of the things that bugs me about the UDRP. My neighbor's got an empty lot he hasn't built on for 10 years. Does that mean I can take it from him?

[DNQuest.com]

Does his lot infringe on a TM?

What you have to realize is domaineers have a bad rap, and unfortunately, the squatters out there have ruined it for many of us. This is the reality of the domain game.

I will have to admit, I would have worked on wargames.com before the other ones, it has better appeal commercially. So congrats on the win, it was a close one.

[BobDiGiTaL]

My neighbor's got an empty lot he hasn't built on for 10 years. Does that mean I can take it from him?

If you build a fence on his property, after 7 years it belongs to you.

[DNQuest.com]

If you build a fence on his property, after 7 years it belongs to you.

Not entirely true. First, it depends on the laws governing eminent domain. I know my dad did something similar to this, but it was 9 years before he could file for eminent domain. Then it has to be brought up to the zoning board for review. You present your case and then they rule if you get it or not (again this depends on the laws that govern the issue, this is what he had to do, he got an additionally 20 feet added to his backyard). You also need to care for the area too, if you just build a fence and don't take care of it, that will not help you. But if you mow the area, paint the fence, keep it nice and pretty, this would help you. But by no means is this "7 years and it's yours", it's a bit more complicated than that.

[jberryhill]

Not entirely true.

This is a state law issue which varies wildly from place to place. The general doctrine of "adverse possession" is where we get the term "squatters" from, incidently.

On the Wargames dispute, there are a couple of important points to bear in mind.

Even I had looked at the lack of actual development skeptically, but what was unknown and unknowable from outside appearances is that the registrant was able to back up his claim to intend to develop the site with concrete, objective evidence demonstrating that prior to notification of a dispute he had indeed planned to use the domain name for his stated purpose.

What often happens, and what initially seemed to be happening here, is that a domain registrant will register a domain name having an incidental correspondence with a trade or service mark, do nothing with it, and when challenged will claim "but it *could* be used for X, Y, or Z" or claim "I intended to use it for X, Y, or Z" but will have nothing solid to back up that claim of a subjective intent.

In this circumstance, Mr. Cadenhead produced that evidence. So if you have a domain name which you intend to develop in the future, then you would do well to read the decision and pay careful attention to the sorts of documents, correspondence, and statements of others, that are needed to back up this sort of claim of intent to develop a domain name in the future. You should treat that sort of correspondence the same way you treat your financial transaction information for your tax records.

[Focus]

Dude, they are gonna hire hitmen to get you now, those MGM guys are nuts...they have'nt made offers for it now?

[Brett Lewis]

The problem is that proving intent or the lack of it is an extremely tricky thing to do, so Panels often make assumptions based on outward appearances. If a panelist sees a borderline case, where a domain name also sat without being developed, he or she may wrongly conclude that the domain name is being held to sell to a trademark holder, even if it is a dictionary word and was never the domain holder's intent.

Is this fair? No. Passive holding, alone, should not be evidence of anything. In reality, though, domain holders need to be aware of how some panelists view it, and protect themselves accordingly. The worst thing to do when confronted with a cease and desist letter or UDRP is to panic and make stuff up because you feel like you have to show use. If you made use, great. Document it. If not, that's okay too. You can work with that. Claim that you intended some great use, but you can't back it up, and you've made your opponent's attorney very happy.

Brett Lewis, Esq.
brett@lewishand.com
www.lewishand.com

[jberryhill]

Well put.