WIPO-decision: Dealers are allowed to use registered trademark of others in their domain name

The recent ruling by WIPO in the ITT-Barton case might be an important precedent for future cases between holders of a registered trade mark and online companies selling their goods. In this case, it was deemed that a company selling ITT-Barton goods, has legitimate interests in holding domain names containing the words “ITT Barton” even if the holder of the trade mark doesn’t acknowledge them as an official reseller.

The domain names concerned in this case where ittbarton.com, itt-barton.com and 11 other domain names all containing the word “iitbarton”. The holder of the domain names is a company called DPI which sells and repairs second hand ITT Barton products. DPI isn’t an authorised reseller of ITT-products.

As with any domain name dispute, the complainant (in this case ITT) has to proof that the holder of the domain name violates 3 rules:

  1. The domain names are confusingly similar to the registered trade mark
  2. The domain name holder has no right or legitimate interest in the domain names
  3. The domain name has been registered in bad faith

WIPO accepted that the domain names are confusingly similar to the trade mark “ITT”.

On point 2) and 3) WIPO however decided in favour of the domain name holder. This was mainly   based on an earlier ruling from 2001. The interpretation of that ruling has however been broadened by this one. While the 2001-ruling regarding the domain name okidataparts.com, only talked about an authorised reseller being allowed to hold a domain name containing the name of the goods they sell (even though this contains a registered trade mark). The decision in the recent ruling now also applies this to any company genuinely offering those goods.

We see a reasonably large amount of trade mark holders forcing genuine resellers of there goods to surrender the domain names they hold which contain the trade marked product name. Most of these transactions occur after applying some pressure on the reseller. Without the need to go through dispute resolution. But in the future, they might proof to show more resistance in handing over their domain name in light of this ruling.

This certainly is a lesson for holders of a registered trade mark. It is sometimes assumed that having the trade mark means that you don’t have to defensively register domain names containing that mark. But this ruling proofs that simply haing the trade mark doesn’t protect you and registering  your trade mark as a domain name still is important.

While there is this lesson for trade mark holders, this ruling certainly isn’t an open door for cyber squaters. WIPO does put forward strict conditions under which the domain name holder can be expected to have legitimate interests in such a domain name.
It is for example not allowed to “corner the market”. Which means that it’s not allowed to registered domain names in so many varieties that there’s no good name for the trade mark holder left.
The domain name holder must also actually use the domain name to sell the trade marked goods and only those goods may be offered on that website. The website must also clearly show that it’s not the official website of the trade mark holder.

On top of that, in this case the domain name holder had already been offering ITT Barton goods and services before they actually bought the domain names. So if you’re first squatting a domain name and thinking you’ll be sure not to lose it just by setting up an online store on it, then the future might proof you wrong.

In this case WIPO might also have been persuaded to rule in favour of the domain name holder because the trade mark holder actually hasn’t been using the “barton” name since a couple of years. Production of those parts has stopped. Which is basically also why DPI only sells second hand ITT-barton parts…

You can find the full WIPO report on
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0936.html
The Oki data part-ruling can be found on
http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0903.html

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This post was written by Bart on November 24, 2008

.be-registry will be off-line on Tue Nov 25 2008

Due to a major system upgrade, the .be-registry will be off-line from Tue Nov 2008 14:00 until approximately 24 hours later.

There should be no interruption on any active domain names, but no actions on .be domain names will be possible (like updates or new domain name registrations).

If you manage your .be domain name through bNamed.net, then you shouldn’t notice much of a difference. All requests will be queued and executed once the .be-registry is up and running again. So it will simply take longer until updates are executed.

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This post was written by Bart on November 17, 2008

McColo was back online

The internet provider McColo had been taken off-line last Wednesday by two of its uplink providers. Investigations had revealed that McColo was running a botnet responsible for what would seem to be around 50% of all spam being sent.

Last Saterday they however managed to get internet access restarted temporarily via a new provider (Telia.net). Why this upstream provider was willing to provide McColo with internet access is unsure. Most commentaries point to either “lots of money” or “simple ignorance” being the the cause.

On Sunday Telia, swamped by complaints from security exports and others, shut down the uplink to McColo again. By that time, McColo had however been able to send a message out to a large amount of the computers they had hijacked, pointing them to a new datacenter in Russia from which they would be running this operation from now on.

Until now, spamlevels however haven’t gone up again. They’re still at more or less the same level as where they where on Thursday just after McColo had just been shut down. At least that’s what we see on our servers and the graphs Spamassing provides on the amount of spam reports per second seem to indicate the same thing.

More information on http://blog.fireeye.com/

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This post was written by Bart on November 17, 2008

Wikipedia.de censored on court order

The site http://www.wikipedia.de until recently referred to http://de.wikipedia.org. The Wikipedia page about the parliamentarian Lutz Heilmann mentions that he previously been assosiated with the Stasi and that he has tried to hide that piece of his past after the fall of the Berlin wall.

Through a court order Lutz Heilmann succeeded in forcing the owner of wikipedia.de to no longer redirect this domain name to the German version of Wikipedia. The contents of the offending article is, however, still available on http://de.wikipedia.org/wiki/Lutz_Heilmann

An immense response to this has come from the Internet community, which now caused the German parliamentarian to have come to repentance and he offered his apologies for starting a trial for this. The German version of Wikipedia should again be reachable via the .de domain name soon.

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This post was written by Bart on November 17, 2008

One of the largest spamnetworks taken down

Amounts of spam arriving on servers drops by over 50%

Based on evidence gather by Washington Post reporters and the security industry, the hosting provider McColo Corp from San Jose, California, has been cut off. At least two large uplink providers for McColo have shut down their up link to them (Global Crossing and Hurricane Electric). It is assumed that this was 90% to 100% of the full internet capacity of McColo.

McColo turned out to be responsible for operating one of the largest botnets in the world (if not thé largest). Such botnets consist mostly of computers infected by virusses, which enables them to be abused to route spam. Spammers route their mails through such botnets to wipe out traces that could lead back to their real network. In this case investigators however did find out the real source of all this traffic: McColo.

The network connection of McColo was disconnected on Tuesday evening. Spam logs on our servers confirm the difference this made, with the amount of spam going down by 48%. Other are reporting difference varying between 40 and 60%. The difference can also be clearly seen on the graph published by spamcop.net showing the amounts of spamreports they receive.  You can see this dropping from between 20 to 30 messages to around 10 messages per second.

Question now is how long this drop will sustain. When Atrivo went offline in September spam amounts did also drop noticeably. But those spammers have found other ways to restart their operations. A couple of days later, spam levels where up at their previous level again. It is expected that taking down McColo will also only have a temporal effect. But at least it’s not making life easy for those spammers.

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This post was written by Bart on November 13, 2008

Single character domain names possible under .sg

Soon, it will be possible to register a single character domain name under the .sg extension and all its subdomaines (.com.sg, .org.sg, .net.sg, .edu.sg, .gov.sg, .per.sg). With one character there are of course not that many different names to register. You only have 26 letters and 10 numbers.

How will the registrations work? From December 1st until January 5th anyone can put in a request for a single character domain name. From January 9th, anyone who has put in an application can bid on the name they want. The person who bds the most, gets the domain name. Only holders of a registered single character trademark can claim priority for a certain single character domain name.

.sg will become one of the few extensions under which it is possible to register a single character domain name. Some years ago this was also possible under the .com extension but since 1993 it isn’t possible anymore to register a single character domain name both under .com as under .net and .org. A few companies were able to register a single character domain name before 1993. For example www.x.com, which is registered by Paypal. The site is still supported by Paypal but now is a test environment. Another example is www.z.com which was registered by Nissan.

On the site of the .sg registry, you’ll find all the information about the registration of single character domain names.

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This post was written by lieve on November 13, 2008

New domain .co.nl

Tuesday November 18th the sunrise period for .co.nl begins. bNamed offers you the possibility to pre-register your name under this extension. Down below, you’ll find more information about the sunrise and the landrush.

1) November 18th – January 15th: Grandfather period

During this period, the owners of a registered .nl name exclusively have the right to register their .nl name under the .co.nl domain.

2) February 10th – February 26th: registered trademarks

Holders of a registered trademark can register their trademark under the .co.nl domain during this second sunrise period.

3) March 17th – March 31st: landrush

During the landrush everyone who’s interested can register one or more .co.nl names

4) April 15th: Go live

From now on, anyone can register any still available .co.nl name. If two or more people want to register the same name, the first come first served decide who gets the name

Also important: this extension isn’t divided by SIDN (.nl registry) but by the owner of .co.nl. This extension might be interesting for companies whose website is visited by people of countries where .co always appears in the domain name such as the UK (.co.uk), New-Zealand (.co.nz), Croatia (.co.kr),… These people are used to country extensions with .co and if they search a foreign company website they often search for .co even if the extension doesn’t contain .co

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This post was written by lieve on November 13, 2008

EURid and SIDN promote their domain names

The winter period seems to be seen as the ideal time for registries to promote their product. We have seen this a couple of times in the past with promotions organised by the .be registry. Within the coming weeks both the .nl and .eu-registry will be promoting their TLD’s.

Since gigantic resources would be needed for EURid to reach all potential registrants in the European Union, their initiative will take the form of niche campaigns that target specific sectors.

During November, three primarily online campaigns will target the transport and logistics sectors, the marketing sector and the “EU village” sector, which are organisations and companies clustered around Brussels. These sectors were selected as ones that clearly benefit from using a .eu domain name. An example banner is shown below. Clicking on it will lead you to their action website http://www.goingfor.eu/

December will see the launch of an innovative month-long poster campaign at the departure gates of Terminal A at Brussels international airport. In total, 32 posters will encourage people to check the WHOIS database to see if the .eu domain name they want is still available.

The .nl-registry focuses on small (self owned) companies and individuals. They have different banners depending on the targetted audiance and will also use radio commercials on a national Dutch radio station. The action period runs from November 10th until late December.

There is also a special website for this action.

The .nl-campaign is combined with a lotery. Every week one owner of a newly registered .nl domain name (who entered into the lotery via a special website) will have the chance to win a flag featuring his .nl domain name. The first winner will also receive some extra promotion for his domain name, since it will be featured in press released and used in other ways to further promote this campaign.

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This post was written by Bart on November 7, 2008

Price for own extension gets higher and higher

This week, ICANN holds a meeting in Caïro. One of the things that will be discussed during this meeting is the price for a personal extension. Right now, the price proposal is the following: if you want to register a personal extension, you need to submit an application. This application will cost €150.000 and this amount needs to be paid as soon as you hand in the application. If your application is rejected and you want ICANN to have another look at it, that will cost you €40.000. If your application is approved, you’ll have to pay €60.000 each year to ICANN to support your extension. If this proposal is approved, a personal extension will cost at least €210.000.

Of course, these prices aren’t final yet and are open for discussion. However it is clear that ICANN wants the personal extensions to be self-funding. An other important remark is that once you’ve paid this €210.000 there are still extra costs. For starters there’s the time you need and the work which needs to be done, before you can submit an application. If your application is approved, a technical name-server infrastructure needs to be set up.

If Flanders wants to register .vla or .flanders, they will also need to set up an organisation that will explote this extension. This is also an extra cost beside the application and the technical infrastructure.

We don’t know the final prices for a personal extension yet but is clear that, if you want your own extension, you’ll need to pay a lot of money.

You can read the complete article on ICANN’s site.

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This post was written by lieve on November 5, 2008

.nl domain names: 3.000.000 registrations

A while ago, the third million .nl domain name was registred at SIDN (.nl registry). So this extension is doing a very good job. According to SIDN, there could still be a lot more registrations under this extension. Surveys show that a lot of people, especially habitants of the Netherlands, are willing to register a .nl domain name but for some reason they don’t.

That’s why .nl registry starts with a large campaign to promote this extension. This campaign will contain leaflets, ads,… and will especially be visual in the Netherlands.

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This post was written by lieve on November 5, 2008