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Posts Tagged ‘domaining’

The US Federal Court has awarded USD$33 million to Verizon Communications Inc, as a result of OnlineNIC registering and monetising domain names which were found to have infringed trademarks belonging to Verizon.

The Court found OnlineNIC to have registered numerous domain names in bad faith, in an attempt to mislead and take advantage of potential Verizon customers.  The Court concluded that OnlineNIC’s behavour was in “blatant and wilful violation” of the US Anticybersquatting Consumer Protection Act, by registering approximately 663 domain names that infringed 26 Verizon trademarks.

Among the 663 domain names registered in bad faith by OnlineINC were www.verizononline.com, www.verizonwireless.com and www.verizonphoneservices.com. The Court awarded the costs and damages at USD$50,000.00 per domain name registered by OnlineINC, which was “confusingly similar” or identical to Verizon trademarks.

Vice president and associate general counsel for Verizon, Sarah Deutsch said:

“We hope the Court’s decision goes a long way toward protecting consumers from becoming targets of Internet abuses and frauds”.

The judgment is not likely to have any serious impact on the .au space, and proceedings brought against domain name owners for trademark breaches.

Tags: domain law, domain lawyer, domaining, Verizon
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We were recently riding a tram in Melbourne when we noticed a Tourism Australia campaign entitled No Leave No Life.

Being domain lawyers, the first thing that stood out to us was the very prominent use of the of the domain name noleavenolife.com. This got us thinking, why don’ t Tourism Australia, or other many Australian businesses use the a .au domain name. One simple explanation is that one wasn’t available, but we suspect the issue is a little deeper than first thought. In our view it is one of publicity and awareness, or a lack of it.

We regularly see promotions and campaigns which use a GTLD such as .com, but what is peculiar about this new Tourism Australia campaign is that it is targeted at an internal audience (yes Australian employees and employers), yet a .com is used. Is this because of a lack of awareness ? We think that this may be the answer in many situations (although not all). The .au space does not receive enough promotion. This is more evident in light of the impending launch of new GTLD’s discussed at ICANN’s meeting in Sydney last week, where we attended with some fanfare the ‘launch for a bid’ for the .food GTLD by celebrity chef Wolfgang Puch.

For Domainers one of the most telling signs of a lack of demand in the .au domain space, are the relatively low sale prices for what would otherwise be premium domains in most other GTLDs. One only has to look at www.netfleet.com.au to see what the market is valuing names at.

We don’t recall any recent campaigns to promote the .au name space, yet that is what is needed. For example .Asia has been heavily promoted in movies and music, maybe this is what the .au space needs.

Although, the public expect that auDA has a responsibility promote the .au space, auDA’s constitution does not make specific reference to the marketing and promotion of the .au domain space. To auDA’s credit they have in the past advertised in the press and given away base ball caps, something more needs to be done so that Australian domain owners can get the full benefit of their domain space. Maybe they could start by writing to Tourism Australia.

PS. auDA may want to check out the .nz Domain Commission, whose most recent “.nz is our home” campaign is doing precisely what the .au space needs a large scale awareness program!

Tags: .au Domain Law, .au Domaining, domain law, domain lawyers, domain name lawyers, domainer, domaining
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As one of the most important domain law cases of recent times, the Commonwealth of Kentucky v 141 Internet Domain Names 08-CI-1409 case has raised concerns across not only the domainer community, but the broader business world as well.

The facts

For those of you who aren’t familiar with this case, it is a judgment of the Commonwealth of Kentucky – Franklin Circuit Court.

The State of Kentucky, USA undertook investigations into online gaming websites accessible to residents of Kentucky to determine if they breached Kentucky law prohibiting gambling. Kentucky made an application to the Court to seize 141 domain names that were used to facilitate residents of the state gambling online; more particularly a state law that allows the state to seek forfeiture of “any gambling device or gambling record possessed or used in violation” of the state anti gambling laws. The investigation also claimed Kentucky bank accounts and credit cards issued out of Kentucky were used in the online gaming.

Kentucky sought on an ex parte (without the defendants having an opportunity to respond or be present before the court at the time) basis (and was granted a seizure order). This case was to review the seizure order granted by the Court in first instance.

Various organizations, including the Internet Commerce Association (ICA) sought leave to be heard by the Court, in opposition to the State of Kentucky.

The issues

In the context of our blog post we have identified only the primary issues for consideration by the Court, which is what the case turns on.

Does the Court have subject matter jurisdiction over a civil forfeiture action involving internet domain names ?

The Defendants argued that the Court did not have jurisdiction, and that the statute was only applicable to seizures arising from criminal convictions, and was not intended to apply to civil seizures such as this. Therefore, the Court did not have jurisdiction to grant a civil seizure (and forfeiture) order in reliance on the seizure laws (Chapter 528).

The Court disagreed with this position and found that Chapter 528 was broad and extended to give the Court jurisdiction grant civil seizures and forfeiture.

 

Does the Court have in rem jurisdiction over the Defendants 141 domain names ?

(a) Are the Defendants 141 Domain Names property ?

The Defendants argued that domain names are not property but rather rights in a contract.

The Court disagreed and found that a bundle of rights (e.g. right to manage, possess and control) to something of value gave domain names the character of property, and therefore allowed the Court to order forfeiture of the ‘property’.

(b) Do the Defendants 141 Domain Names have a presence in Kentucky ?

The Defendants argued that there were no Registrars or other domain name authorities in the state, therefore the domain names were not situated in the state.

The Court cited a number of authorities and stated that all that was required were minimum contacts in the state, and that because the domains were present at every step of the gaming process, they were present in the state, and subject to the law of Kentucky.

(c) Are domain names by reason of their illegal or unlawful use gambling devices?

The Defendants argued that domain names don’t fit the statutory definition of a ‘gambling device’ as they are not a tangible device, which is designed and manufactured.

The Court did not agree and viewed domain names as virtual keys for entering and creating virtual casinos from the desktop in the state.

The Consequences

As a consequence, the seizure and forfeiture order was upheld.

On the face of it, any state could potentially treat a domain name as property located within a state and capable of seizure and forfeiture. This in itself is a great concern, and has the potential to set a dangerous precedent.

It is our view that the Court erred in a number of its findings, for example on a reading of Chapter 528 the law is clear, it is intended that a gambling device is a physical piece of hardware or machinery. A domain name can hardly fall into this category. The Court also made an interesting comment on this point when it said “…..the Court is not persuaded. Like most endeavors, a person who adheres to the literal text of the law, but violates its spirit cannot succeed”. This statement gives us some insight into why the Court deemed a domain name to be a gambling device.

Current Developments

An appeal was filed and heard by an Appeals Court, it is expected that the judgment will be handed down by the Appeals Court in late January 2009. Don’t forget to check out our blog for an update.

Tags: domain law, domainer, domaining, ICA, Kentucky Domain Seizures
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Domain monetisation regularly causes problems for this breed of persons called ‘domainers’, with threats of domain deletion, but what does auDA’s (au Domain Administration Ltd – the Industry Regulator for the .au domain space) ‘Domain Monetisation Policy 2008-10’ (“the Policy”) actually say ? We will look at these issues in part 1 of our 2 part blog series on domain monetisation.

Our position on many of auDA’s policies is well known within the industry – they are in many cases unreasonable, do not reflect the practical realities, and do not reflect developments in the .au domain space. Whilst we acknowledge that auDA’s job as the regulator is a difficult one, and that this isn’t helped by some people who blatantly do the wrong thing, it is the legitimate domainers who get caught in the net.

The greatest issues with the Policy arise from the definitions or ‘terminology’ as auDA likes to call it contained in the Policy. The three definitions that we would like to focus on in the Policy are:

a) “domain monetisation” means registering a domain name in order to earn revenue from a monetised website;

b) “monetised website” means a website or landing page that has been created for the purpose of earning revenue from advertising, including monetised domain parking pages;

c) “domainer” means a person who has registered a domain name under the close and substantial connection rule for the purpose of domain monetisation;

These definitions are rather unusual.

The definition of ‘monetised website’ is in essence is a website that has been created for the purpose of earning revenue from advertising. Last time we checked the internet, most commercial  (and some non commercial) websites sought to earn revenue from advertising their goods and services, after all, isn’t this what commercial websites are for ?

On the basis of this definition www.coopermills.com.au,  www.news.com.au and www.sunsmart.com.au are monetised websites. If we were to register lawyers.com.au, and develop a website to use in promoting our services, then this would also be a monetised website. auDA agrees with this interpretation in clause 4.2 and says:

“If a domain name resolves to a monetised website then auDA is entitled to regard the domain name as having been registered for the purposes of domain monetisation….”

Bearing this in mind we look at the definition of ‘domain monetisation’, which means registering a domain in order to earn revenue from a monetised website. On this basis almost all domains registered for commercial (and some non commercial) websites, are registered for domain monetisation.

Having established that almost all commercial entities who have registered domains for use with their business websites are monetised websites, we look at the definition of ‘domainer’.

A domainer is someone who registered a domain name under the close and substantial connection rule (for those of you who are not familiar with auDA Published Policy – Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2008-05) – this is one of the grounds upon which you may register a .com.au domain name under – the other is, an exact match, abbreviation or acronym of the registrant’s name or trademark) for the purpose of monetisation.

The policy goes some way to narrow its extremely broad definitions – so now we have a situation that if you are a commercial entity who has registered a domain and developed a website to resolve from it, and that domain name is not “an exact match, abbreviation or acronym of the registrant’s name or trademark;” then you are a ‘domainer’. Congratulations!

Two ‘domainers’ that spring to mind are News Limited by virtue of its www.news.com.au website and the Anti Cancer Council of Victoria by virtue of its website www.sunsmart.com.au on which it sells a large range of products.

In part 2 of our blog series we will look at the significance of being a domainer. Stay tuned…..

Tags: Australian domain law, Domain Monetisation, domain name law, domain policy, domaining, online advertising
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