IPwars.com

Mainly intellectual property (IP) issues Down Under

Selected links from the last week (or so)

Here is a selection of links to IP-related matters I found interesting this week:

Patents

Trade marks

Copyright

Designs

Not categorised

I hope you find something interesting. If you did or have a question, leave a comment or send me an email

Dot Feedback

I was the panelist in an interesting UDRP dispute, debeers.feedback, which raises a couple of points worth being aware of.

If you’re not aware of it, .feedback is one of those new Top Level Domains that ICANN approved earlier this year. It is supposed to be a forum where people wishing to provide feedback (Duh!) can make their point. At the time of its approval, it was apparently rather controversial.

In this particular case, a number of what appeared to be otherwise genuine “feedback” posts only appeared on the website after Debeers sent a letter of demand, even though they were dated much earlier. The registrant did not seek to explain that.

The first point I wanted to draw your attention to is that, unbeknownst to the Complainant or me, the posts in question seem to have been cut and pasted from Yelp. If you have to deal with one of these domain names, a Google search will be in order.

Marty Schwimmer, the original trademark blog, suggests another argument: that “feedback” is semantically different to “.sucks” (and similar criticism outlets) and, Marty argues, implies an official outlet or connection.

Selected links,from last week

Here is a selection of links to IP-related matters I found interesting this week:

Patents

Trade marks

Copyright

Remedies

Not categorised

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

auDRP Overview

You probably know that the auDRP is the dispute resolution policy for the .au domain name space. You may not know that there have been about 330 decisions in its roughly 12 years of operation.

Prof Andrew Christie, with a helping hand from James Gloster, Jeffry Kadarusman and Daniel Lau, has prepared an “Overview” outlining how the decisions have treated the various issues arising under the auDRP. And he is launching the auDRP Overview at a Workshop on Wednesday 27 August at 9:15 am to 10:45. Venue the Crown Promenade.

Details here.

Prof Christie is the Professor of Intellectual Property at the University of Melbourne a very experienced domain name panelist, having amongst other things written the seminal decision Telstra v Nuclear Marshmallows D2000-0003If you find yourself with a dispute over a domain name registered in the .au domain name space, I anticipate you will find your first stop being this overview. Given the influence of UDRP decisions on auDRP decisions, although there are some important differences, you will also probably find it helpful in the context of the UDRP too. Make sure you read it.

The WIPO Overview to the UDRP version 2.0 here.

On the problems of descriptive names

The Full Federal Court has dismissed Kosciuszko Thredbo’s appeal from the dismissal of its claims against ThredboNet.

Kosciuszko Thredbo (KT) runs the Thredbo ski resort. Amongst other things, one of its subsidiaries promotes the range of activities available at Thredbo from a website having the domain name: thredbo.com.au. ThredboNet leases some of the accommodation at Thredbo from KT and hires it out to prospective skiers, partygoers and the like. Indeed, the terms of its lease from KT obliged it to hire out, or at least offer for hire, the leased premises. ThredboNet had the, er, gall to promote its accommodation, amongst other things, from websites having “thredbo” in their domain names including “thredbo.com”.

KT contended that this conduct was passing off its reputation in “Thredbo” and misleading or deceptive conduct contrary to s 18 of the Australian Consumer Law.

The Full Court agreed with KT that the trial Judge had erred in requiring KT to demonstrate it had acquired sufficient secondary meaning in Thredbo, the name of the place, that KT had the exclusive right to use the name. This did not help KT in the end:

31. In the end, the word “Thredbo” is a geographical name of a location in New South Wales. The appellants’ resort and businesses are located there and they hold (and their predecessors in title held) the head lease over the land on which the village and resort complex are located. But others also operate businesses, as sublessees, in the physical location known as Thredbo. The real issue was not whether the appellants had established a monopoly over the right to use the word “Thredbo” but whether they had established that the respondents’ conduct in using that word was likely to lead ordinary or reasonable consumers seeking accommodation or services in Thredbo into believing that the respondents’ business or the accommodation or other services that the respondents were offering was or were that or those of the appellants: Campomar 202 CLR at 87 [105]; Office Cleaning 63 RPC at 42. The more significant issue, then, is whether the primary judge erred in his conclusions on the question whether the respondents’ conduct was misleading or deceptive (or likely to be so).

The trial judge didn’t.

There were a number of strands to the Full Court’s reasoning. The Full Court recognised that some degree of confusion must be accepted where 2 traders use descriptive words otherwise one would be given an unfair monopoly.

In this case, the evidence from Google search results showed that there were a number of businesses that advertised with “Thredbo” in their name and/or domain names. ThredboNet’s website looked sufficiently different to KT’s websites and was limited only to the limited range of accommodation it provided. After the proceeding commenced, ThredboNet had included a disclaimer on its website. There was an initial form and a second, more explicit form. Either was sufficient:

We are not satisfied that a consumer who went to any of the respondents’ websites would reasonably have associated the operator of the website with the appellants. The respondents’ domain name www.thredbo.com was very similar to that of KT, namely www.thredbo.com.au. A consumer might easily be led to the former website thinking it was that of the appellants when doing an internet search. But in today’s society the ordinary or reasonable consumer seeking accommodation, or other goods or services, on the internet will frequently click on a result in a web search thinking it is a link to a particular site, only to find when his or her browser is directed to the selected site that it is not the site of the supplier or business that the consumer wanted. The ordinary, reasonable consumer who came upon the home page of www.thredbo.com would have seen, depending on when he or she accessed it, the first or second disclaimer in the middle of the page. Each disclaimer appeared under a recognisable, distinctive heading “About Thredbo.com”. It did not have the appearance, as asserted by the appellants, of being “buried in the text”.

This is not an endorsement of the initial interest confusion theory.

In the course of reaching their conclusion, the Full Court at [43] endorsed the proposition that:

…. Ordinarily, most people searching for a term or information will look at the first page of search results and then select the most apparently appropriate link or links from that page before they would move to a second or subsequent page of search results. Indeed, they would be unlikely to see any need to go to a second or subsequent page of search results unless they had not found some satisfactory site or sites on the first page.

There was a third issue: clause 4.3 of ThredboNet’s lease from KT appeared to forbid the use of “Thredbo”:

4.3 NO USE OF ‘THREDBO’

The Sublessee must not use or permit the use of the word ‘Thredbo’ in connection with any business carried on by the Sublessee, without the prior written consent of [KT].”

(Emphasis added by Full Court)

Because ThredboNet was required by the lease to hire out the accommodation for at least 26 weeks of the year, cl 4.3 could not mean ThredboNet could not use “Thredbo” in connection with that business. At a minimum, it must have been contemplated by both parties that ThredboNet would be able to tell its customers and potential customers the address of the properties. Further, the Full Court pointed out that the restraint was not a restraint in respect of the land on which the leased properties had been built. The restraint operated quite independently and separately from the land. Finally, KT did not provide evidence, or sufficient evidence, that a restraint of this kind was commonly accepted in such contracts as a normal incident of the arrangement. Accordingly, cl. 4.3 was invalid at common law as an unreasonable restraint of trade and operated so far outside any permissible scope that it was not capable of being read down under s 4 of the NSW Restraints of Trade Act.

Question: would it have made any difference if KT had a registered trade mark?

Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2014] FCAFC 87 (Siopis, Rares and Katzmann JJ)

 

Lid dip: Sue Gatford

auDA reviews whoIS policy

auDA, the body which administers the domain name system in the .au (i.e. Australia) space (OK, ccTLD) has embarked on a review (pdf) of its WhoIS policy.

There are 2 main issues:

  1. Should there be any changes to auDA’s WHOIS Policy covering the collection, disclosure and use of WHOIS data for .au domain names?
  2. Should access to .au domain name data (other than via WHOIS) be opened up?

Apparently, there was a workshop in October 2013 where these issues were canvassed (and you can view a video online – it does go for 1 hour and 25 minutes).

I think if you are a trade mark owner, or act for trade mark owners, you would be well-advised to be making submissions to at least retain the basic information you need to identify the registrant if you want to challenge the registration as conflicting with your trade mark.

I am also not sure why the WhoIS information does not include the date the current registrant became the registrant.

auDA has called for submissions to be made by 31 January 2014.

Link to the Issues Paper (pdf again)

Getting back domain names

Bromberg J has now made orders arising from his Honour’s finding that the use of real1.com.au infringed REA Group’s registered trade mark. Amongst other things, these included orders that the disputed domain names be transferred to REA Group. An expensive exercise in trying to generate value from “real 1”.

On the other hand, Middleton J has rejected Vendor Advocacy Australia’s attempts to get domain names like:

  • http://www.vendoradvocacy.com;
  • http://www.vendoradvocacyaustralia.com;
  • vendoradvocacymelbourne.com;

from a former employee (or contractor), Mr Seitanidis notwithstanding his Honour’s findings about much Mr Seitanidis’ conduct.

Vendor advocates are apparently much in the market these days. A Mr Ian Reid had been operating a vendor advocacy business for a number of years. Some of his advertising did include:

Vendor Advocacy Australia
Vendor Advocacy Australia

but the corporate stationery and much of the other advertising took this form:

Corporate logo
Corporate logo

and the radio advertising also emphasised the personality of Mr Reid.

Vendor Advocacy Australia did not have any registered trade marks and was forced to fall back on misleading or deceptive conduct.

After a detailed discussion of the cases on descriptive terms and secondary meaning, Middleton J held:

…. The phrase “vendor advocacy” is descriptive and was generally used by various traders in the same line of business. I am not satisfied that the words or brand relied upon in this proceeding by VAA have any secondary distinctive meaning. VAA has primarily promoted itself by reference to the persona of Ian Reid. I do not consider that any consumer which assume that a reference to vendor advocacy, or Australian Vendor Advocacy, would be associated with VAA or Ian Reid. In fact, because Ian Reid has been so much at the front of the promotion of VAA, without his presence the consumer may well assume it is not associated with him or VAA. Any imperfect recollection of consumers would arise from VAA’s adoption of a name consisting of descriptive words. The lack of recall will be as a result of the promotional activity adopted by VAA, by reference to the descriptive words ‘vendor advocacy’.

 And so Vendor Advocacy Australia did not get orders for the transfer of the domain names.

One interesting consequence of this is that there may be an inquiry on the undertaking as to damages given for an interlocutory injunction preventing the use of some of the domain names.

Middleton J was willing to take at [257] a fairly robust view about consumers’ familiarity with the use of similar domain names by different companies. His Honour also thought any momentary or transitory confusion which might arise from the use of the domain names would not rise to the level of misleading or deceptive conduct. As his Honour reminded:

In circumstances where a trader adopts a descriptive trade name the use by another trader of a trade name that also uses those descriptive elements will not generally (in itself) constitute misleading or deceptive conduct.

His Honour also joined the growing band of judges who don’t think consumers pay much attention to whether domain names end in .com or .com.au or the like.

 

REA Group Ltd v Real Estate 1 Ltd (No 2) [2013] FCA 968

Vendor Advocacy Australia Pty Ltd v Seitanidis [2013] FCA 971

auDRP review

auda is conducting a review of the auDRP – the dispute resolution policy covering domain names registered in the .au domain name space.

The auDRP was derived from the UDRP, so many of the principles worked out under the latter are equally applicable under the auDRP. Two of the main differences, however, are that under the auDRP:

  • a complainant may have rights sufficient to found a complaint “in a name”, not just a trade mark; and
  • the auDRP requires a complaint to show only registration in bad faith or use in bad faith, it is not necessary to show both bad faith requirements have been satisfied.

auda published an issues paper (pdf).

There is some interesting information about how many disputes there have been and which service providers have been providing the dispute resolution services – in recent years it has been WIPO and LEADR. There is also a breakdown of fees charged by various bodies for dispute resolution under the UDRP.

One question posed is whether auda should put the fees charged for dispute resolution up. Other issues on which submissions are invited were identified by ICANN in Annex 2 to its Final Issues Report (pdf) in 2011 on the UDRP. They include:

Policy/Process Issue

page3image4352

Description

Safe Harbors

Policy should include clear safe harbors, such as to protect free speech and fair use or other non-commercial rights of registrants

Appeals

page3image8608

No appeals of process in policy itself– two options appeal of decision or trial de novo

Establish an internal appeals process to ensure implementation of fair trial requirements

Statute of Limitations

There should be an express time limitation for claims brought under the policy

Reverse Domain Name Hijacking/
Uniform Procedures for Transfers

page3image15752

A finding of reverse domain name hijacking is rarely found, and panelists should be encouraged to make this finding when appropriate

No specified timeframe for implementing transfers

Business Constituency

Delays often experienced in implementation of decisions by Registrars

Loser Pays Nothing

Losing Respondent should pay filing fees and attorney’s fees

However, I am coming to this late: submissions, if any, are supposed to be in by 31 January 2013.

Names and transfer policies for .au domain names

auDA is the body regulating the .au “name space” or ccTLD.

In that role, it has issued a number of policies including the auDRP (modelled on the UDRP) for the resolution of disputes between rights “holders” and the registrants of confusingly similar domain names.

auDA’s Board has now announced its acceptance of a number of the recommendations of:

2010 Names Policy Panel

Among the recommendations that have been accepted are:

Domain Name Eligibility and Allocation Policy Rules for Open 2LDs:

  • That the requirement for registrants to be Australian (or registered to trade in Australia) should remain in place.
  • That the “special interest club” eligibility criterion for org.au and asn.au domain names should be more clearly defined.
  • That auDA should publish the results of its periodic audits.
  • That auDA’s position on third party rights with respect to domain name leasing or sub-licensing arrangements should be clarified and published.
  • That the close and substantial connection rule for id.au should be relaxed to include domain names that refer to personal hobbies and interests.
  • That direct registrations under .au should not be allowed at this time.
  • the list of reserved names (i.e., those you can’t have) should be maintained and updated.
  • the misspellings policy should be continued in its current form (e.g. you can’t register acebook.com.au, aaami.com.au etc.).
  • A revision of the “domain monetisation” policy so that it will no longer be a standalone policy and “the definition of “domain monetisation” will be replaced with a description of permissible practice, to accommodate a range of monetisation models”.

When the “domain monetisation” policy was originally adopted:

a monetised website was easily recognisable and mostly followed a common format, which meant that enforcement of the policy was relatively straightforward. However, the practice of domain monetisation has significantly changed from a simple webpage with click-through advertising links, to incorporate other formats such as news articles, blogs, images and so on. Methods employed by domainers (ie. people who register domain names for monetisation purposes) are becoming increasingly sophisticated and complex. In some cases it may be that domainers are attempting to circumvent the policy. However, to be fair to the domainer industry, the practice itself is constantly evolving as domainers test and refine ways of generating revenue.

If this were a gTLD, the trade mark owners would be going ballistic – “to be fair to the domainer industry”?????

The proposed revisions, however, would still prohibit allow objection on grounds that “the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered.” See chapter 3 and p. 20 of the Name Policy Panel’s final report (pdf).

Some recommendations still under consideration:

  • That registrants should be able to license a domain name for a 1, 2, 3, 4 or 5 year period.
  • That, in the absence of any compelling technical or policy reason to maintain the restriction, single character domain names should be released (subject to the registrant being eligible to register the name).

Secondary Market working group

The accepted recommendations of this group effectively aim to put in place a mechanism to transfer domain names from one registrant to another in place of the current “workaround” involving surrender and (re-)registration (with the attendant risk that someone might get the name in between those two events.

Announcements: Names policy, Secondary Market

Reports: Names policy (pdf), Secondary Market (pdf)

ICANN approves ‘historic’ new gTLD regime

ICANN’s board meeting in Singapore today voted to launch new top level generic names: apparently 13 voted for, 1 opposed and 2 abstained.

Currently, gTLDs there is a closed system, confined to 22 different types such as .com, .info, .biz etc.

Under the new plan, there won’t be any limits on what can be the top level domain. Thus, if Sony wanted to launch its own top level domain such as .sony or maybe .psp, it could apply to do so.

According to ICANN’s Chairman of the Board:

Today’s decision will usher in a new Internet age,” said Peter Dengate Thrush, Chairman of ICANN’s Board of Directors. “We have provided a platform for the next generation of creativity and inspiration.

and

ICANN has opened the Internet’s naming system to unleash the global human imagination. Today’s decision respects the rights of groups to create new Top Level Domains in any language or script. We hope this allows the domain name system to better serve all of mankind,” said Rod Beckstrom, President and Chief Executive Officer of ICANN.

Some reports also indicate that so-called internationalised domain names have been approved; i.e., those using characters other than Latin letters – Chinese, cyrllic etc.

Applications for new gTLDs are planned to be open from January 2012 to April 2012.

It is expected that it will cost US$185,000 to apply.

There looks like lots of “fun” will be in order.

Some names will be “reserved”. (See page 2-8 of the Application Guidebook (really p. 60)). Then there will be questions of applicant suitability and DNS / technical stability.

There will be an objection process to deal with 4 types of disputes:

  • String Confusion Objection – The applied-for gTLD string isconfusingly similar to an existing TLD or to another appliedforgTLD string in the same round of applications.
  • Legal Rights Objection – The applied-for gTLD stringinfringes the existing legal rights of the objector.
  • Limited Public Interest Objection – The applied-for gTLDstring is contrary to generally accepted legal norms ofmorality and public order that are recognized underprinciples of international law.
  • Community Objection – There is substantial opposition tothe gTLD application from a significant portion of thecommunity to which the gTLD string may be explicitly orimplicitly targeted.

See page 3-4 (really p. 150) of Module 3.

For IP owners, there will be a trademark clearinghouse process and, after designation of new gTLDS, a post-delegation dispute resolution procedure.

So, if you own a trademark, you may want to start planning now about how you are going to protect your interests even if you don’t plan to set up your own cyberspace.