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01 Jan 2010
For the benefit of trademark owners, ICANN has something called the UDRP (Uniform Dispute Resolution Process) that allows the owner to file a complaint against an allegedly infringing domain name, to be resolved by one of a small set of arbitrators. About 90% of UDRP cases that proceeed to a decision are decided in favor of the complainant; opnions differ as to whether that's because of the merit of the complaints or the institutional bias of the arbitrators.
Google files lots of UDRP complaints. One arbitrator is the World International Property Organization in Geneva. In 2009 they decided all of their Google cases in Google's favor: googlemapsargentina.com, googleinstores.com, adsgoogle.net, google4people.net, googblog.com, mygooglemoney.com, and googlehrd.com.
Another arbitrator is the National Arbitration Forum (NAF) in Minneapolis, Minnesota. NAF used to handle a lot of credit card disputes, until July when they stopped rather than defend themselves from charges by the state Attorney General that they colluded with collection agencies and credit card companies. But they still handle a lot of UDRP cases, in 2009 deciding googlegameroom.com, googl.com, googlevideodownload.com, googlewows.com, googleacompanhantes.com, googleventure.com, googleventures.com, youtubeislam.com, pagerankglobal.com, googleprofiles.com, google-milhas.com, googlewebmarketing.com, googlel.com, googlepowersearch.com, googlemark.org, googlemenu.com, googlemarketing101.com, googlesearchserver.net, googledataentry.com, googlebuzz.com, and googleos.org in Google's favor. To nearly everyone's surprise, they decided one case against Google, groovle.com.
Groovle is a small Canadian company that lets you set up a web home page with a Google search box on a background of your choice. You can upload your own picture, or they offer a variety of tasteful pictures for you to use. Google's complaint, as it is in nearly every UDRP case, is that the domain name is "confusingly similar" to Google's and is being used in bad faith. Groovle's search box isn't a problem; that's a standard Google program called Adsense for Search, open to anyone who wants to put a search box on their web site.
Groovle's response is no, it's not similar, this case is just like the earlier case of froogles.com, one of the few UDRP complaints decided against Google. (That complaint claimed similarity to google.com, not to their shopping search froogle.com now called Google Products.) The panel agreed:
Respondent contends that its
What impresses me is that although the arbitrators clearly are trying to do a good job, the resulting decisions are utterly arbitrary. The complaint invariably says "Their domain 'dog' is just like our domain 'cat', except for the trivial differences of d rather than c, o rather than a, and g rather than t", and the response is that "our domain is utterly unlike theirs, since it has the huge differences of d rather than c, o rather than a, and g rather than t." In many, cases, the similarity is indeed overwhelming, e.g., it's hard to see googlemapsargentina as anything other than Google Maps Argentina, and wwwgoogle.com (a 2000 case) as anything other than a typo for www.google.com, but in the froogles.com case, two of the three arbitrators agreed that there was no confusing similarity between "froogles" and "google" while the third dissented, saying:
Complainant contends that the <froogles.com> domain name is confusingly similar to Complainant's GOOGLE mark. The only difference is the mere addition of the letters "f" and "r" and the plural "s," which do not significantly distinguish the domain name from the mark.
(Evidently expertise in spelling was not a selection criterion.)
Looking through the thousands of UDRP cases, a company called Western Hay failed in its attempt to take westernhay.com and westernhay.net, while a company called Aero Turbine did get aeroturbine.net. Reading the decisions, the only difference I can see is that Western Hay annoyed the arbitrator. ("Both parties are guilty of exchanging intemperate remarks.")
While trademark owners certainly have interests in their marks, domain names are not trademarks for well known reasons, notably that trademarks have geographic and product scope and domains don't. The UDRP serves too often to let trademark owners win cases they'd never win in a real trademark court.
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