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The US Ninth Circuit Court of Appeals has upheld a district court ruling in which a creditor of John Zuccarini successfully levied execution against a domain name held in Mr  Zuccarini’s name.

Mr Zuccarini, sometimes known as Cupcake Patrol and other “colourful” noms de plume, may be familiar to those of you around in the “old” days of the UDRP from the frequency in which he appeared as a respondent.

Venkat, in a guest post on Professor Goldman’s Technology and Marketing blog, highlights, the Ninth Circuit’s ruling permitted execution on the basis of the location of the domain name registrar. So, if your client has registered his/her/its domain name through a US registrar, the domain name could be at risk if your client becomes embroiled in a dispute with someone who has access to the US legal system.

Warren J has granted an interim injunction to Wasabi Frog restraining until trial the operation of an online clothing retailer.

Wasabi Frog has traded since 2006 as an online retailer of young women’s fashion at Boo Hoo and Boohoo.com. It also has CTMs for BOO HOO, BOOHOO.COM and BOO.

missboo.co.uk started up in September 2009 as an online retailer of women’s fashion, targetting the same demographic: 17 to 25 year olds.

His Lordship found a triable issue on likelihood of confusion on the basis of a number of factors. One involved another player in the fashion industry apparently mistaking the applicant for the defendant.

Interestingly, another was the inferences to be drawn by traffic that Wasabi Frog generated after purchasing the Google Ad Words “Miss Boo”. Other aspects considered included the similarities in the respective companies’ websites and the “very very savvy” target markets of both companies.

Damages were clearly not an adequate remedy for Wasabi Frog, all the more so as the defendant was impecunious.

Wasabi Frog Ltd v Miss Boo Ltd [2009] EWHC 2767 (Ch)

Lid dip: Peter A Clarke

Well, strictly speaking, the 2nd Circuit in the USA has held that Google’s sale of keywords may be use in commerce.

Rescuecom had sued Google for trademark infringement by selling advertisements (sponsored links) triggered by Rescuecom’s trademark. The District Court had dismissed the claim on the grounds that Google’s conduct was not use in commerce. So now it goes back to the District Court.

Of course, Google’s conduct, if were done in Australia or transacted with a business located in Australia, would be in trade or commerce for the purposes of the Trade Practices Act. In context, however, the nearest analogue under our law is whether or not the conduct might be “use as a trade mark” (in the sense of using the sign in the course of trade) for the purposes of s 120 of the Trade Marks Act.

Professor Goldman considers the ramifications under US law (and the distinguishing of WhenU) here.

If the (US) FDA requires you to include information about the risks of using your drug and Google’s AdSense has a 95 character limit, what do you do?

Prof. Manara explores how companies, particularly pharmaceutical companies, are using domain names to ensure that their online presence doesn’t contravene regulatory requirements such as FDA requirements to include information about risks in materials advertising drugs.

WIPO’s annual report summarising developments in domain name disputes for 2008 has been published here.

The headline attracting news around the world:

a record 2,329 complaints filed

Interestingly,

the WIPO Center has received 14,663 UDRP or UDRP-based cases (gTLDs and ccTLDs), covering 26,262 separate domain names. Reflecting the truly global scope of this dispute mechanism, named parties to WIPO cases represented over 100 countries in 2008 alone. The United States of America (US), France, the United Kingdom (UK), Germany, Switzerland and Spain were the most frequent bases for complainants, while the US, the UK, China, Spain, Canada, and France were the most represented countries by named respondent party

and

almost 30% of all cases were settled without a panel decision. Of the remainder, 85% of the panel decisions favored the complainant, while 15% of the complaints were denied, leaving the names in the possession of the registration holder. Cases were handled by 285 WIPO panelists from 40 countries.

There are also short notes on what sectors were affected, and further developments in the domain name space.

Typosquatting can occur when someone registers a misspelling of your domain name in the hope that your customers will mistype the domain name in their web browser and land on that someone’s website. (Apparently, a significant portion of people who do so then click on a link on the typosquatted website, thus generating pay per click advertising revenues for the site ’squatter’.)

Apart from the potential diversion of custom, FairWinds Partners also makes the point that typosquatting can harm the reputation of the brand.  As an example they speculate about the impact on Disney’s customers if they landed on a typosquatted page promoting pornography.

Recognising that it is not feasible to register every possible variation of your domain name to defend against such practices, FairWinds Partners have published a attempt to analyse typosquatting scientifically.

The study looked at 3,000 top level domains that had more than 2,000,000 hits per month.  From this universe, they found that most typosquatting appears to fall into 1 of 10 categories.  They also concluded that the typosquatters were targetting domain names fairly scientifically.

Apart from typosquatting, FairWinds Partners notes that consideration should be given to registering the domain name in other tlds –  e.g. consider .biz and .net, not just .com; also consider country specific domains. This, however, is already problematic – there are already 21 gTLDS, not to mention of the country specific ccTLDS such as .com.au and .co.uk etc.  And its going to get much worse with ICANN, in the interests of competition and diversity no less, planning to allow a potentially unlimited number of tlds.

Download the paper here (pdf).

Other research suggests that about 10% of internet searches don’t land on their expected destination (Lid dip Marty).

For those of you wondering what Google Chrome is all about, David Pogue does an excellent review and Google, of course, has pretty good explanatory materials including a comic.

Something your brand owners may want to start thinking about is the new monoline address/search bar: you type in a word and Chrome starts suggesting a range of alternatives.  See an example and watch the video here.

Nothing to worry about, perhaps, if you type in coke and get taken here but what happens if the top suggestion takes you here (takes forever to load)?

This brings up the trade mark/IP issues Marty Schwimmer spotted emerging in Japan here.

Oh, that other, EULA issue here, there and everywhere else too.

Mark Bender, at Monash University, has written about domain name disputes in Australia …

According to the abstract:

The objective of this paper is to provide an overview of the law in relation to domain name disputes involving trademarks that applies in Australia. Generally the focus of this paper will be confined to consideration of domain names ending with the .au suffix. An overview of the rights associated with domain names, registered business names and registered and unregistered trademarks is provided, as is an outline of the domain name dispute resolution processes and some some summary statistics and key cases in relation to domain name disputes.

The article has been published in the Monash Business Review vol.3 No. 3 (2007) and appears on SSRN here.

No doubt reflecting its business review audience, much of the article is taken up with discussing ways of protecting trade marks under Australian law and a flirtation with the 2000/2001 controversies over whether the UDRP is biased towards rights owners. Pp. 10 – 14 hit the .auDRP compared to the UDRP and flag some of the Australian court cases that I wasn’t aware of rather than a detailed analysis of the decisions under the .auDRP. A good starting point is CSR Ltd v. Resource Capital Australia Pty Ltd, 128 FCR 408.

Lid dip, Prof. Manara.

Lots of Australians involved in a domain name dispute here.

Another Australian, also at Monash, took an in-depth examination of the international domain name law here.