This is a a one panel WIPO decision that’s maybe troubling for any one owning a domain related to a governmental entity or governmental function.
This case involved several domains containing “811” combined with a state.
The domains at issue were:
alabama811.com, al811.com, la811.com, louisiana811.com, tennessee811.com, tenn811.com, and tn811.com
811 was set up by the FCC in March 2005 to as the national abbreviated “One Call” dialing code for providing advance notice of excavation activities to underground facility operators.
So 911 like 811, 511 and 311 were set up by the federal government to provide a one call solution for a specific purpose.
We know 911 is for emergency’s, 511 is for traffic information, 311 is for city information and services and 811 was set up for “”alert the proper authorities to imminent excavation work, thereby avoiding potential service interruptions and safety hazards.”
“”As with other One Call designations, a resident of any state of the United States may simply dial a three-digit number and make a local telephone call to obtain this sort of information.””
Many states have designed the handling of the 811 system to the not-for-profit entity public utility commissions or other regulatory agency’s, including the states at issue here; Alabama, Louisiana; and Tennessee.
So lets start with this fact
None of Complainants owned a registered trademark for 811.
However a trademark was filed by with the (“USPTO”) by “a Common Ground Alliance”, a trade association which represents its members involved in providing 811 services.
Complainants also argued they have common law rights in term “811” through use in commerce.
The domain holder registered the domain names in 2007.
“Screen shots of the home page submitted with the WIPO Complaint, showed an “under construction” (registrar) page, with links to “commercial, tourist, and state-related activities in the applicable state.”
Now for the decision”
While the panelist found:
“”The USPTO-registered trademark held by Common Ground Alliance is not relevant since none of the Complainants has claimed license rights from the mark owner; none has even alleged membership in the Alliance, much less proven derivative rights by reason of membership.”
However the panelist agreed with the complaints they had a common law right based on usage even though none of the complainants may have even begun administering the 811 service when the domain were registered:
“””While Respondent may not have had these three Complainants specifically in mind at the date of registration, he surely knew that someone would (and by 2007 probably had begun to) manage 811 the network in these states. Registration and subsequent use were at Respondent’s peril under the Policy should the operators demonstrated service mark rights in the combination of the applicable state name and 811 at the time of registration, as the Panel has found Complainants have done.””
“”Respondent admits knowledge of the FCC Order designating 811 for special services. Respondent’s principal in his Declaration states that at the time of registering the disputed domain names he was “aware of the implementation of a nationwide 811 call system for use in connection with avoiding digging problems related to underground utility lines.”
“””For similar reasons Respondent’s acquisition and use of the disputed domain names have been in bad faith, by attracting members of the public seeking a Complainant or the 811 services it provides by use of marks in which the Complainants hold common law rights. Respondent has registered similar domain names for at least 42 other states in addition to Alabama, Louisiana, and Tennessee.
“”The fact that the content of the “under construction” pages may have been selected by a registrar rather than Respondent does not absolve Respondent of bad faith. “”
“”Such conduct falls squarely with the example of bad faith in paragraph 4(b)(iv) of the Policy, which does not require that Respondent benefit so long as the use is commercial and someone benefits. “”
Bottom line of this decision, Domains that touch upon governmental functions can be taken even if not parked by the holder, even in the absence of a registered trademark.
What does this say for other governmental type of domains?
Newyorkpublictransportation.com or Floridapublicschools.com for example, are those domains at risk?
How about Newyorktaxcollector.com?
The possibilities are really endless and so are the questions.
Any of our domain attorney’s want to weight in on this one?
This was a hideous decision. I read this this afternoon and it made me ill.
The way the actual decision is written, the panelist makes no sense at all in the way that he constructs the argument that the complainants definitely do not own the TM, nor are they licensed from any TM holder… in fact, they have no TM… yet the first prong of the complaint is satisfied somehow because of the respondent’s use?
WTF?
The panelist’s stretched and twisted logic is without foundation; even under WIPO’s own rules.
Any US court would quickly find in the registrant’s favor.
Not that these were worth regging in the first place.
Leaving aside the reasoning on these facts, the winds in the US are currently blowing in favor of big government so this concern should be on radar. And if Newyorktaxcollector.com is no good for privateers, then neither is Newyork.com, for even more compelling reasons. In Canada btw every single pure geo (ie. toronto.ca) is CIRA reserved for municipalities. It can be said that owning online geography is vital to govt, to deliver services and info to its citizens for example, so I don’t see many new geoTLDs getting approved, but I do have some concern that top level geo approval morphs into second level geo oversight.
Snapnames hasn’t even made the newspapers yet, because I guess they cant find a suitable victim, so domainers’ priorities and importance don’t rank and must therefore be careful IMHO.
“”Complainants’ EVIDENCE, while by itself perhaps NOT ADEQUATE to establish “secondary meaning” as that term is used in the United States trademark law, has demonstrated use of the term as an identifier for services sufficient to invoke the Policy. Common law rights for the purposes of the Policy may be established in a word or phrase that is “common,” “descriptive,” or perhaps not even susceptible of trademark registration.” Richard Lyon
Richard describes the “Policy” here as if it were built on a completely different set of standards from Federal trademark law, when in fact the “Policy” itself was established to help protect Federal trademark holders and it is based on the same set of rules.
Richard seeks to make the case in a blatant “twistful” of contradictions.
Very unlucky decision which should be appealed . This case Can now be used by other public entities for “rightful” domains
WIPO needs to be sued over these cases.
Completely off topic here but are there anymore adult specific domain auctions these days? I can’t seem to find any mention of any upcoming ones anywhere. Thanks.
Steve
I haven’t seen any either but the next big adult show will be in Vegas In January
There might be one held in conjunction with that.
As Larry mentioned, this big question mark is what about geos?? With decisions like this for obscure government related sites it would appear to make it much easier for cities, states, countries to go after their names. ie Florida.com, America.com, Cuba.com, Africa.com, etc….. without much difficulty. I like geo’s and have some but they still seem very risky. imo.
Best.
Here’s what concerns me from the text of the WIPO decision :
******
”The fact that the content of the “under construction” pages may have been selected by a registrar rather than Respondent does not absolve Respondent of bad faith.“
”Such conduct falls squarely with the example of bad faith in paragraph 4(b)(iv) of the Policy, which does not require that Respondent benefit so long as the use is commercial and someone benefits. “
******
Have I missed something? It was my understanding that if the registrant chooses not to park a domain name, the registrant would not be responsible for the temporary site published by the registrar and the advertisements that may accompany it.
If this decision actually represents the current understanding of these rules and regulations, this has HUGE implications. I specifically choose not to park my domain names in order to avoid this very result! The fact that the registrar does not offer a mechanism whereby a domain owner can simply opt-out of any any third party monetization plan makes this decision all the more shocking.
As for the issue of domain names that incorporate the name of a governmental entity, service, location and/or other identifier, to the extent that these decisions draw on common law trademark rights, the more that holders of geo domains might have reason to worry.
If a municipality one day asks it’s city attoney on what basis a private business venture or individual is entitled to the thousands or millions of dollars in continuing revenues generated by a domain name bearing the very name of the city it has been charged with governing and whose budget, efforts and good will are the very reason such demand and popularity for the domain name counterpart exists at all, how will the city attorney respond?
Geo domain owners might contact their own legal representatives and begin to contemplate that question as well. Depending on that assessment, it might even be worth considering a strategic revenue sharing alliance with a governmental entity as preemptive to going to battle for a domain name that could possibly be lost.*
*Not intended as legal advice or a legal opinion. See your trademark attorney for that. This is simply one of many possible patterns that might emerge as the domain dots continue to be connected. Nevertheless, it’s the beginning of a pattern I would want on my radar screen sooner instead of later.
SDM
Exactly
This decision is very troubling on many levels.
It’s a poor decision with convoluted logic, but the implications are quite wide and reaching, why I thought it was a very important case for all to read through
This decision in particular is a complete farce of actual Federal trademark law as it relates to common law rights and secondary meaning. No City attorney with his/her head screwed on straight would hang their hat on this decision as a basis for bringing a complaint against a geo domain name owner. There has already been ample precedent set in case law to the benefit of these owners.
The fact is the complainants here knew this and tried to use someone else’s trademark to establish their own rights because they knew they had no common law rights. They should have been caught with their pants down yet the panelist chose to play along anyway while at the same time make up his own trademark law.
No one entity has exclusive rights to a pure geographic domain name extension except for the .gov TLD. Trying to “partner” with a local municipality is just a recipe for disaster.
Sound
The problem is and we have discussed this before is WIPO and UDRP’s are very inconsistent, they seem to make there findings first and then try to frame an argument to support it after, so you can’ really sleep well at night on the basis of precedence when it come to these hearings
My apologies. You are correct on that point. What I meant by “case law” was in actual Federal District Court, not the three ring circus that is the UDRP.
Soundly Reasoned ,
If you would cite a few of the leading cases related to this area, I’d be very interested in reading them.
It seems to me that when government is faced with record deficits and nowhere else turn for revenue, the environment for the perfect geo domain storm is in the brewing. With the shift we’re seeing in public policy, does the concept of “spreading the domains around” really sound so far fetched – even if it requires legislative meddling on the part of the courts? What’s more, didn’t the Snow bill tell us it’s not only the courts we have to worry about?
I’m not saying any of this will come to pass, but to move forward without taking these possibilities into account might also be a recipe for disaster.
“Time and pressure”
It’s an old adage. As my interpretation of it goes, with enough time and pressure all thing change. Even the oceans will move and the mountains fade away. As true as that may be it still takes time and pressure. With enough pressure pushing back on the politics of this matter it will take that much more time for those who covet to get what “they” want, but in time they will get it; whether that be your domains or taxation over the internet and anything else for that matter. That is why you need to cherish and utilize to the fullest what you have now, because non of us is to know what the future holds.
My advice would be that if you want to look something up, look up the history of America’s Wild West and the railroad barons and land squatters. To me this is a mirror image of history repeating itself.
You’d think that the respondents representative Douglas M. Isenberg, who is also a WIPO panelist would have put together a better defense here . . .and maybe gone with a 3 person panel.
btw is it just me or does it not seem odd that a panelist can also defend or bring these cases to udrp ?