Zak Muscovitch and 207 Media defend against Google!

[TheLegendaryJP]

Here is a recent decision in which the best domainer lawyer in Canada was able to defeat an online giant!

http://dnattorney.com/groovle.shtml

http://www.domainnamenews.com/


:yes:

Since the Panel found that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not confusingly similar to the mark, the Panel declines to analyze the other two elements of the Policy

I like these guys...

Honorable Karl V. Fink (Ret.), Chair

Hon. Robert T. Pfeuffer (Ret.), Panelist

Mr. David E. Sorkin, Panelist

Dated: December 24, 2009

 

[south]

Nice read. Thanks!

 

[stewie]

nice :yo:

 

[Fearless]

I didn't know Google resorted to such thievery.

 

[TheLegendaryJP]

I didn't know Google resorted to such thievery.

They have finally sunk to our level :lol:


I mean... yes, its disheartening. :disappointed:

 

[Zak Muscovitch]

Thanks JP ...Very kind words!

Although I am a big fan of Google, its nice to see that the Panelists didn't see Google as infallible. This decision seems to have gotten a lot of attention in the world media. It has been covered by newspapers throughout Canada, but also by the BBC and the London Telegraph. I found out through Google News.... :0 lol

 

[dn-101]

Zak,
Mazel Tov on winning this case.
But the really important issues probably lie elsewhere, say
monopolising the traffic flow by the big engines
theft of intellectual property
etc.

 

[Focus]

Zak is the man, if you ever need a bulletproof BIG domain sales contract he is the guy.

:smokin:

Chris

 

[FormerDnForumer]

Thanks JP ...Very kind words!

Although I am a big fan of Google, its nice to see that the Panelists didn't see Google as infallible. This decision seems to have gotten a lot of attention in the world media. It has been covered by newspapers throughout Canada, but also by the BBC and the London Telegraph. I found out through Google News.... :0 lol

Zak, I even saw the story on the CBC's news crawler last night.

 

[DaddyHalbucks]

Zak is also one of the nicest guys in the domain business.

Congrats!

 

[WhoDatDog]

The first thing anybody thinks of when they see the word Groovle is Google. It is close to being confusingly similar, and I would guess that they never come up with that name without Google. Their site, Groovle, wasn't started until 2007, either.

The decision is probably correct though, since you have to draw the line somewhere. However, the outrage is misplaced. Without Google, they never dream up Groovle, and there are very few words that look as similar. Google was correct to protect their mark, even if the decision has merit.

There is a place near me called Pita Hut. They would probably keep their name, too, but it wouldn't be outrageous to think that 99 percent of the people are thinking the same thing you are when they see the name. Could you call a pizza chain Pappa Jim's? Certainly not Pappa Jon's. It would be proper for Pappa John's to protect its mark each time.

Groovle is getting benefits from Google's mark, since almost all people will think of Google when they see Groovle. Unless there is some story where these guys had this business years and years ago then it is quite likely that they never would have come up Groovle on their own. There are a bunch of tube names out there, as well, that would have never existed without YouTube, but most of those are safe since tube had a meaning before YouTube was in existence.

The intent, though, is/was to capitalize on another's work and effort.

 

[Fearless]

The first thing anybody thinks of when they see the word Groovle is Google. It is close to being confusingly similar, and I would guess that they never come up with that name without Google. Their site, Groovle, wasn't started until 2007, either.

The decision is probably correct though, since you have to draw the line somewhere. However, the outrage is misplaced. Without Google, they never dream up Groovle, and there are very few words that look as similar. Google was correct to protect their mark, even if the decision has merit.

There is a place near me called Pita Hut. They would probably keep their name, too, but it wouldn't be outrageous to think that 99 percent of the people are thinking the same thing you are when they see the name. Could you call a pizza chain Pappa Jim's? Certainly not Pappa Jon's. It would be proper for Pappa John's to protect its mark each time.

Groovle is getting benefits from Google's mark, since almost all people will think of Google when they see Groovle. Unless there is some story where these guys had this business years and years ago then it is quite likely that they never would have come up Groovle on their own. There are a bunch of tube names out there, as well, that would have never existed without YouTube, but most of those are safe since tube had a meaning before YouTube was in existence.

The intent, though, is/was to capitalize on another's work and effort.

This means what Zak did is similar to when a criminal lawyer gets a murder off on a murder charge.

 

[fab]

To be honest, I'm a little shocked at Google for going after this domain. the name is clearly not confusing, and their is an actual functional web-site.

I just wonder why they didn't bother making the case in civil court in any case.

 

[Deleted member 5660]

The UDRP is only supposed to be for a small class of "abusive" registrations where the issues are clear-cut. It is not supposed to be for complicated trademark issues.

 

[fab]

The UDRP is only supposed to be for a small class of "abusive" registrations where the issues are clear-cut. It is not supposed to be for complicated trademark issues.

I assume you're responding to my comment, but don't know if you're agreeing or disagreeing, or something else.

 

[mike031]

bravo

 

[Deleted member 5660]

I assume you're responding to my comment, but don't know if you're agreeing or disagreeing, or something else.

I agree it should have gone to court if there are any disputes here. I think the panel should have dismissed the case because trying to determine if there is confusion in a case like this is beyond the scope of the UDRP. You should be able to look at the name and say it is obvious that it is infringing. If you have to do an analysis that is subject to interpretation then it is not a UDRP case. It is all fact-based and there is no discovery. Of course Google can still go to court.

 

[katherine]

The UDRP is only supposed to be for a small class of "abusive" registrations where the issues are clear-cut. It is not supposed to be for complicated trademark issues.

Not exactly my understanding. UDRP is just an off-court option but the issues are not always clear-cut. UDRP rulings often delve deeply into TM issues.

 

[Deleted member 5660]

Not exactly my understanding. UDRP is just an off-court option but the issues are not always clear-cut. UDRP rulings often delve deeply into TM issues.

That is what the arbitrators are supposed to do. You are right that they have delved into complicated issues at times and it helps promote others to file more UDRP's when it doesn't apply to the situation.

ICANN says http://www.icann.org/en/udrp/udrp-second-staff-report-24oct99.htm (section 4.1.c):

​

Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all "legitimate" disputes--such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name--to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.

 

[TheLegendaryJP]

This means what Zak did is similar to when a criminal lawyer gets a murder off on a murder charge.

You would think a " murderer " could appreciate that :lol: