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The Libya Anticybersquatting Domain Name Lawsuit

I recently successfully represented Mr. Ahmad Miski in a matter originally captioned as “The Great Socialist People’s Libyan Arab Jamahiriya and the Embassy of the Libyan Arab Jamahiriya v. Miski.” Stated another way, my client was sued by the “Embassy” of Libya. The case was a domain name matter involving the domain names embassyoflibya.org, libyaembassy.com, libyaembassy.org, and libyanembassy.com. Read court’s full decision here.

 

Factual Background

 

My client is a “certifier” of documents via his firm known as the Arab-American Chamber of Commerce. Stated another way, he works with third party businesses to have documents “legalized” by the various embassies in the Arab world. While embassies can “legalize” documents, my client does not, and cannot, offer that service and the Plaintiff and the Defendant are not direct competitors. Plaintiff alleged that my client’s use of the domain names to promote his business was an infringement of its common law trademark in the term “Libya Embassy” and attempted to gain control of the domain names in question.

 

After a full bench trial, which is relatively rare in these types of disputes, District Court Judge Reggie Walton ruled, correctly in my mind, that the Plaintiff had failed to demonstrate that it had trademark rights in “Libya Embassy” for purposes of legalizing documents and my client prevailed in his efforts to retain control of the domain names.

 

Analysis

 

In my mind, this case was interesting for a variety of reasons.

 

First, I was frankly surprised at the minimal demonstration of trademark rights by the Plaintiff in this matter. When alleging common law rights, the burden is on the Plaintiff to prove that its mark is “famous” enough to be legally protectable. In this case, the Plaintiff did not produce a very strong record of use in commerce. Among other issues, the Plaintiff referred to itself using a variety of inconsistent titles, including “Libya Bureau” and “Embassy of the Libyan Arab Jamahiriya.” Plaintiff also did not present substantial marketing or survey evidence that would indicate strength of its marks. Finally, testimony at trial indicated that the Plaintiff did not even keep consistent records of the number of documents that were legalized each month.

 

While I appreciate that reasonable minds may disagree, I’m not sure the Plaintiff was realistic about its ability to prove its common law trademarks given the evidence presented at trial. On the other hand, I suspect the Plaintiff did not expect to be forced to fully demonstrate its rights, either. I often see “bigger” plaintiffs file suit against “smaller” defendants in the hope that the matter will be settled well before trial when a defendant balks at the potential costs of defense compared to the value of the domain name. I applaud Mr. Miski for properly and comprehensively defending himself in this matter and I would encourage other domain name holders with credible defenses to do the same.

 

Second, this case was interesting for the political undertones. The United States and Libya maintained relations from the 1950s until 1986, when an Executive Order by President Reagan imposed unilateral sanctions on Libya. The 1988 terrorist bombing of Pan Am Flight 103 near Lockerbie, Scotland, was a watershed moment in the strained relations between the two nations.

 

These strained relations were relevant in the case because the Plaintiff had to demonstrate consistent commercial use of its alleged trademark to demonstrate rights to the domain names. The fact that Defendant registered the domain names during a period in which formal U.S./Libya relations were not in effect was relevant in disputing the Plaintiff’s alleged trademark rights. Defendant argued that he could not be violating a trademark if an alleged trademark holder was not even operating in the relevant commercial space. Alternatively, we argued that if a trademark did exist prior to the sanctions, the purported mark would have been abandoned for purposes of trademark rights analysis.

 

While Judge Walton did not base his decision on this fact, I’m of the view that a unilateral imposition of sanctions should be considered “abandonment” when evaluating trademark rights. Unilateral impositions of sanctions are not generally meted out by a political actor without some identifiable reason. If sanctions are imposed it is not a logical leap to assume that a purported mark holder did something to deserve those sanctions. Judge Walton’s opinion does not reach this issue, given the Plaintiff’s failure to prove rights in its mark, but I think it would have been interesting precedent if it had.

 

At the end of the day, this was a good decision that came to the right result. I’m pleased that Mr. Miski prevailed in his lawful defense, but this case is also an excellent reminder that domain name matters rely on trademark rights. Plaintiffs need to be realistic about their rights before instituting similar matters and Defendants should not be afraid to defend their rights when lawfully employing descriptive domain names.

 

Visit the Lexero domain lawyer page for more information on domain law, disputes, cyber-squatting, and more.

UDRP Panelist Cites Menhart Analysis on Laches

 

I’m a bit late to discuss this, but I aim to give it appropriately detailed attention now. In Charter Communications, Inc. v. CK Ventures Inc. / Charterbusiness.com the Hon Neil Brown QC, a respected UDRP Panelist, cited my prior post on the potential applicability of laches as a defense to a UDRP complaint:

 

This panelist was part of a majority in Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139 that felt that there is scope for looking again at the assumption that laches has no part to play in UDRP proceedings, a decision that has been the subject of at least one commentary at “www.cyberlawonline.com” and which may stimulate some debate.

 

My article to which the Hon. Neil Brown specifically refers is entitled “A Potential New Defense Under UDRP.”

 

The Charterbusiness.com matter involved a case where the complainant had waited approximately seven years to file its complaint. While recognizing that laches “is not generally recognized under the Policy” Respondent, correctly in my view, raised a laches defense. The majority rejected the defense, citing decisions in The E.W. Scripps Company v. Sinologic Industries and Tom Cruise v. Network Operations Center / Alberta Hot Rods. Panelist Brown issued a separate opinion. Notably, he opined:

 

Without going into it in detail here, it may be time for a closer examination of [laches] and whether it is appropriate to exclude it as a defence in cases where the complainant has waited years before filing a complaint.

 

For better or for worse, a laches defense continues to be a topic of discussion in UDRP decisions. As a result, two questions arise. First, does such a defense make sense in a UDRP context? Second, what is a rational defense practitioner to do?

 

On the first issue, I am of the opinion that a laches defense, or some related “time-limit” protection, such as a statute of limitations, makes sense in a UDRP context. The present policy effectively allows a complainant to wait for an eternity before filing a case. While there is certainly some unfairness to a respondent in such situations, there is also the added potential problem of “spoliation” of evidence. Furthermore, the preclusion of a laches defense (or a related statute of limitations) has the effect of failing to motivate a mark holder to pursue the action in a timely manner. For example, an unscrupulous mark holder might take advantage of an unsuspecting domain owner by allowing development of the domain prior to the filing of a complaint and potential seizure of the name.

 

On the other hand, I certainly appreciate the counterarguments that the UDRP policy does not specifically provide for a laches defense or that the specific factual inquiries may be problematic in the context of an arbitration proceeding that is designed to favor efficiency.

 

In my view, however, the implementation of a laches defense would not be a terrible hindrance to the goals of an efficient arbitration proceeding. In many cases the inquiry could be almost as simple as calculating the time between the registration date of the domain name and the date the complaint was filed. Furthermore, arbitrators regularly decline to reach certain conclusions about, for example, potential trademark infringement or unrelated business disputes when the facts of the matter exceed the scope of the policy. In the end, I see little reason that a laches defense could not be considered in a UDRP context when the circumstances warrant.

 

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The second issue, of particular interest to practitioners, requires us to consider the appropriate course of action when it comes to a UDRP defense. I’m of the opinion that when you or your client has a colorable laches defense, it is proper to raise it. While I appreciate that laches is “not generally recognized under the Policy,” it is also clear enough that the defense of laches is at least “in play.” UDRP respondents would be wise to use that status to their advantage when appropriate.

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A Potential New Defense Under UDRP

 

The recent UDRP decision concerning “razorbacks.com” caught my eye due to a relatively comprehensive panel discussion on the issue of laches (pronounced: ˈla-chəz) under the UDRP.

Laches in law is a defense that calls into question the complaining party’s good faith in bringing its complaint in a untimely manner. A defendant asserting laches argues that a plaintiff that delays in asserting its claims, to the detriment of the defendant, should not be entitled to recover on its claims.

In “razorbacks.com” the Panel noted that “a majority of the Panel (Messrs. Badgley and Brown) is prepared to acknowledge the possible applicability, in appropriate and limited circumstances, of laches in a case under the Policy.”

The Panel supported their decision in several ways. First, the Panel notes that Rule 15(a) of the UDRP provides that “a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

The Panel also addressed previous decisions addressing and dismissing a laches defense under the Policy. First, the Panel addressed whether laches fell within the “‘catchall’ language of Rule 15(a) because, strictly speaking, it is a principle of equity and not law.” Panelists Badgley and Brown disagreed, noting that in many jurisdictions, the “sharp line between law and equity has been blurred if not effaced.” Panelists Badgley and Brown also found that concerns about intense factual inquiry in laches analysis “might be no more difficult than disposition of other questions that routinely come before UDRP panelists.”

In the end, the majority of the Panel did not decide the “case on the basis of a laches defense,” but whether “characterized as laches or not, the considerable delay on the part of Complainant in bringing the Complaint militates against its success in this proceeding.” The Panel went on to deny the relief sought by Complainant.

While the Panel chose their words carefully, the implication seems clear: UDRP respondents that have a colorable laches defense would be wise to raise it in their responses under the Policy. The Panel seems to be inviting laches defenses in the hopes that the issue will become more salient in the minds of other panelists. While there is no guarantee that future panelists will agree with the razorbacks.com Panel, this decision has unquestionably presented an open invitation for future laches defenses under the UDRP.

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Political Domain Name Infringement and Law

 

As this election year heats up candidates in all types of political races are trying to reach likely voters at their doors, on their telephones and on the Internet. In this race for voters you might guess that a candidate’s domain name plays an important role in sharing his or her message with likely voters. What if a candidate’s domain name is already taken by a third party? What if a candidate’s name has already been taken by their opponent? Many of today’s candidates, finally recognizing the importance of a strong Internet presence in races for political office, are facing the reality of this intellectual property concern.

First, candidates may find that an “innocent” third party already has their preferred domain name. A classic example of this was the site “kerryedwards.com” in the 2004 United States presidential election. Kerry Edwards is the name of an individual, who had registered the site for his own personal website. Of course, “Kerry” and “Edwards” were also the two last names of the Democratic presidential candidate, John Kerry, and his vice presidential running mate, John Edwards. While the Kerry political campaign reportedly inquired about the name, Mr. Kerry Edwards declined to sell. Because Mr. Kerry Edwards was using the name for his personal use the Kerry campaign had no legal grounds to obtain the name (whether it would have been a wise political choice is another story entirely).

Sometimes, there are more legitimate infringement issues. In Montana, for example, both major political parties have taken turns at registering the names of an opposing candidate. Candidates who are victims of the practice routinely accuse the respective registrants of infringement. Registrants of the names proclaim that their actions are protected under free speech laws.

Some state legislatures, undoubtedly containing some politicians that were victimized by the practice, have offered legislation seeking to combat the practice. At this time only California has passed such legislation into law. The California Political Cyberfraud Abatement Act defines “political cyberfraud” as:

 

A knowing and willful act concerning a political Web site that is committed with the intent to deny a person access to a political Web site, deny a person the opportunity to register a domain name for a political Web site, or cause a person reasonably to believe that a political Web site has been posted by a person other than the person who posted the Web site, and would cause a reasonable person, after reading the Web site, to believe the site actually represents the views of the proponent or opponent of a ballot measure.


Effectively, California’s law seeks to provide trademark protection to political candidates, at least to the extent that the site refers to the candidate’s political campaign.

The intersection (or clash) of free speech and intellectual property rights as protected by this law suggests that it is only a matter of time before it is challenged as unconstitutional by a domain registrant. When the time comes, a potential challenger will have a good chance of invalidating the law. Courts have historically been uneasy to limit speech when it comes to matters as open as a campaign for public office.

In the meantime, potential political candidates should always do the simple thing: register your most important domain names before you even consider entering the political arena.

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Auctions to Determine New Top Domain Applicants

 

Given that ICANN recently voted to expand the possibilities for gTLDs, the oversight organization must now deal with the logistics of selecting and assigning administrators for each of the soon to be available gTLDs.

One issue is the possibility that two potential organizations may want to be responsible for allocating the same gTLD. For example, perhaps Group A, a non-profit group, wants “.money” for purposes of identifying sites concentrating on proper personal financial management. Group B, a financial services firm, wants “.money” for identifying financial advisors, stockbrokers and other finance professionals. ICANN’s solution for such a quandary: auctions.

ICANN has determined that, assuming all other things are equal, the competing parties will determine the winner of the coveted extension by auction. This is a method that has been used by new extensions in recent years to determine ownership of particular domains. For example, the “.mobi” extension famously auctioned off several of its “premium names,” as opposed to opening them up in a “landrush” public registration format.

The primary problem with an auction is the concern that our fictitious “Group A” would not have the financial means to compete with “Group B” for our example ".money" gTLD. ICANN attempts to resolve this problem by implementing a system of handicaps. These handicaps would favor for example, “community-based bidders whose community is located primarily in [the] least-developed countries.”

Are these procedures enough to ensure fairness? More than likely, they will be more than enough, because it is quite unlikely that there will be many disputes at all. One can imagine certain gTLDs, like “.sex,” may be disputed, but the chances are good that there will be no need for auction handicaps when the proposed gTLDs are propounded by for-profit industries. Even if the auction process is not particularly favored by all interested parties there is peace is knowing that there will be few, if any, auctions implemented in practice

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ICANN to Vote on Expansion of gTLDs

 

ICANN, holding its 32nd International Public ICANN Meeting June 22-26, 2008 in Paris, France, is set to vote on an substantial expansion of opportunity for new Generic Top-Level Domains (gTLDs). gTLDs are top-level domain extensions such as (.com, .net, and .org). It is expected that the voting bloc will approve the proposal when it comes up for the vote Thursday.

Late last summer, the ICANN Generic Names Supporting Organization issued their final report about the potential expansion. In a nutshell, the report recommended that ICANN liberally grant new gTLDs so long as the new gTLD and their operators would meet certain requirements.

First, strings in new gTLDs must not be confusingly similar to an existing top-level domain. So, you’re not going to see extensions like .con, .comm, or .nett. Second, strings must not be a “Reserved Word.” This includes no single letters, no two-letter extensions, and no Single Letter/Single Digit combinations. You wont see .a or .hq or .4H.

Third, “strings must not be contrary to generally accepted legal norms relating to morality and public order that are recognized under international principles of law.” Will “.xxx” be appropriate? We’ll likely see some type of dispute between the powers that be before that question is resolved.

Fourth, “strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.” Just as the current policies prevent trademark infringing .com or .net names, any new gTLD would require similarly.

Finally, there are some technical and procedural requirements, mandating that any operator have the financial, technical and legal means to successfully run the extension.

So what does it all mean? In a word: confusion. There are already numerous gTLDs that do not receive much use. Adding hundreds of others could mean a very complicated web browsing environment. Time will tell, but chances are good that this means little for the average consumer unless business and industry start to heavily adopt the new extensions. Given the fact that use of the current alternative gTLDs is limited it is hard to imagine that additional gTLDs will attract much attention.

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Riskiest Domain Extensions

 

McAfee is releasing a report that identifies the highest risk
domain extensions. McAfee reports that the “most dangerous” domains to navigate
to are ".hk" (Hong Kong), ".cn" (China) and ".info"
(information).

 

About 19% of .hk domains were dangerous, 12% of .cn sites,
and 12% of .info sites. Of course, the majority of sites with these extensions
are still safe, but McAfee’s report suggests that users should exercise
additional caution when accessing sites with these extensions.

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ICANN’s Weak Grip on WHOIS

 

A recent article discusses the continuing problems with
accurate WHOIS records, many registrars’ complacent allowance of such inaccuracies,
and ICANN’s limited involvement in enforcing the accuracy of such records.

 

Specifically, there is a discussion about the concentration
of inaccurate WHOIS registration at certain registrars. Unsurprisingly, the
registrars that have the most inaccurate WHOIS records also have the greatest
amount of domains that appear in spam email messages.

 

ICANN came out with a response shortly after the report
broke, which effectively reminds registrars that ICANN has the right to
terminate the status of registrars that do not comply with the requirement of
maintaining accurate WHOIS data in their records.

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.ORG May Adopt DNSSEC

 

Public Interest Registry (PIR), one of the more progressive
domain extensions, may be the first major top level domain extension to adopt
the DNA Security Extension (DNSSEC) on .ORG top level domains. The system is a
method of authentication that helps to ensure that clients (such as a home
computer) requesting a particular domain name is sent to the appropriate IP
address hosting that website.

 

For example, if a home computer enters
http://www.cyberlaw.pro in their web browser, they want to be sure that they
are sent to this CyberLaw PC website instead of a competitor or a forgery. The
“standard” DNS system takes a user’s request for a particular domain name,
checks it against a database of IP addresses, matches the appropriate IP to the
domain name, and sends the user to the appropriate web page. DNSSEC creates an
additional protection by digitally signing the information sent from the DNS
server to the user. This additional layer of security helps to prevent against
forgeries or similar criminal or fraudulent efforts.

 

The system has been implemented by several country-specific
TLD with some success, and potential expansion is now being considered. ICANN
(The Internet Corporation for Assigned Names and Numbers) is currently
accepting
public comments on the system.

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Registrar Sued for Holding Domain Names

 

A lawsuit seeking class action status has been filed in the
United States District Court for the Central District of California against Network
Solutions and ICANN. The suit arises under Network Solutions’ practice of
“holding” domain names for a set period of time after a potential registrant
searches for the names. If the potential registrant does not immediately purchase
the name Network Solutions itself will register the name, and “holds” it for
about four days, allowing the potential registrant to register the name at
Network Solutions, but preventing a potential registrant from registering the
name anywhere else during the four day period.

 

A copy of the complaint is here. The suit seeks injunctive
relief, asking that Network Solutions cease the practice, as well as
unspecified damages. The complaint seeks to certify a class of:

 

All persons or entities in the United States who searched for the
availability of a domain name through Network Solutions and subsequently
registered that domain name through Network Solutions.

 

The suit’s first burden will be certification of the
proposed class. The Plaintiff makes suitable arguments for typicality of
claims, commonality of issues, and numerosity. This means that the class has
enough people, all the proposed members of the class are similarly factually
situated, and that the legal issues relevant to each person are common to
others in the class. A plaintiff must prove all three elements for a court to
certify a class action.

 

Even where a class may be certified in this action, no one
should expect a check in the mail as a result of this suit. The best possible
result for the Plaintiff will likely be an injunction preventing the practice
of holding names in the future. More likely, the parties will settle by reaching an agreement out of court, though it remains to be seen if Network Solutions would be willing to entirely eliminate the process without a court order.

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