Techdirt. Stories filed under "udrp"

Ron Paul Doesn't Win RonPaul.com And Is Guilty Of Reverse Domain Hijacking

Mike Masnick — Fri, 24 May 2013 05:36:00 PDT

We found it odd back in February to see Ron Paul try to use the domain dispute process to take over RonPaul.com, a domain that was held by some of his biggest supporters. The folks who had the domain had even offered Paul the RonPaul.org domain for free, since they didn't want to disrupt their existing community, and Ron Paul (or his lawyers) tried to spin that into something to use against them, pretending that it showed malicious intent.

It appears that the whole thing has backfired badly on Ron Paul. He failed in his attempt to seize both domain names and was also found guilty of reverse domain hijacking on the .org account, for filing the demand for it after it had already been offered to him for free.

On the use of the .com, the panel found the following:

As Respondent puts it, expressing support and devotion to Ron Paul’s political ideals is a legitimate interest that does not require Complainant’s authorization or approval. Moreover, Respondent’s legitimate interest in the Domain Name is strong because the site provides a place for political speech, which is at the heart of what the United States Constitution’s First Amendment is designed to protect. In this way, the Panel is persuaded by Respondent’s arguments and evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish any trademark at issue. Moreover, Respondent has submitted evidence that there are multiple, very clear disclaimers on the website to which the Domain Name links, indicating that the site is not Complainant’s official site. In regards to Complainant’s arguments that the website is actually a “pretext for commercial advantage”, the Panel finds the website linked to the Domain Name is primarily a noncommercial service, while the products advertised and sold are ancillary to the site’s primary purpose as a source of news and information about Ron Paul, and serving as political forum. Moreover, Respondent’s use meets the criteria for a nominative fair use, as stated in a number of UDRP cases.

Yeah. Ron Paul loses out because the First Amendment is even stronger than he believes it to be. How about that?

The fact that the owners offered the .org for free plays heavily into the decision:

Finally, related to Respondent’s second main point, there is no evidence that Respondent has attempted to corner the market of domain names to prevent Complainant from reflecting his alleged RON PAUL mark in a domain name. To the contrary, the evidence indicates that in 2013 Respondent offered to give Complainant the Domain Name for free.

And it's this point that leads to the panel saying that Paul was engaged in reverse domain hijacking.

Respondent has requested, based on the evidence presented, that the Panel make a finding of Reverse Domain Name Hijacking. In view of the unique facts of this case, in which the evidence demonstrates that Respondent offered to give the Domain Name to Complainant for no charge, with no strings attached, the Panel is inclined to agree. Instead of accepting the Domain Name, Complainant brought this proceeding. A finding of Reverse Domain Name Hijacking seems to this Panel to be appropriate in the circumstances.

While this may just make Ron Paul hate the UN even more, perhaps it'll drive home the point that his initial attack on the fan site was ridiculous.

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Gaijin Entertainment Demands Gaijin.com, Which Predates Them And Doesn't Infringe Their Trademark

Mike Masnick — Tue, 7 May 2013 10:03:42 PDT

In the latest example of extreme trademark abuse, video game company Gaijin Entertainment is not just claiming a trademark over "gaijin" but using it to demand the domain name Gaijin.com, which was registered by Brandon Harris back in May of 1995. The legal nastygram that the company sent is quite incredible, suggesting that Harris registered the domain later and is somehow infringing on their mark:

It came to our attention that you registered and maintain a website www.gaijin.com (“Infringing Website”) that infringes Gaijin Mark. By maintaining and offering to public your content via the website, i.e., Infringing Website, having the same domain as Gaijin Mark, you create consumer confusion and mistake as to the source, sponsorship and/or affiliation of the Infringing Website and Gaijin, thereby infringing Gaijin Mark.

Luckily, Harris has Mike Godwin (yes, that Mike Godwin, so get your Nazi references in early) as a lawyer, and he quickly sent back the following excellent response.

Dear Mr. Goldstein-Gureff,

Please be advised that my client, Brandon Harris, disputes your trademark-infringement claim in every particular.

That is the most polite way to state how vigorously we dispute your attempt to assert flat ownership of the word “gaijin,” a word so well-established in English that it is an entry in the Oxford English Dictionary.

Currently, I’m advising my client to publicize your demand letter, so that the entire game-consuming public will be made aware of your client’s overreaching trademark assertions. In addition, we will of course continue to make clear that Brandon Harris’s website in no way gives rise to any kind of marketplace confusion of the sort that American trademark law is designed to address.

In the interests of allowing you and your client to gracefully retract your claim, we have chosen to refrain from publicizing your demand until you respond to this message, provided that you respond no later than close-of-business Monday. Since I am currently in DC, Eastern time applies.

–Mike Godwin

P.S. I understand that your clients are possibly Russian nationals. You may wish to explain to them the scope and limitations of the Lanham Act in the United States.

–MG

Obviously, they did not retract the claim in time, and thus, the trademark bullying is now public.

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Ron Paul, UN Hater, Asks UN To Take RonPaul.com Forcefully From Ron Paul's Biggest Supporters

Mike Masnick — Mon, 11 Feb 2013 05:46:29 PST

A year ago, we pointed out how hypocritical it was for Ron Paul (at the time still a Congressional Representative and a candidate for President) to file a ridiculous lawsuit, clearly abusing trademark law, in an effort to unmask some anonymous internet users who had made a video that attacked another candidate, John Huntsman, and closed with a claim that the video was from Ron Paul supporters. Many of Pauls' supporters actually believed the video was a fake, from Huntsman supporters, seeking to discredit Ron Paul. Even if that was true, there was simply no excuse to then abuse trademark law to try to take away someone's anonymity. And, yes, it was an abuse of trademark law -- as he both claimed trademark on his name and claimed that the video was a "use in commerce" (it was not). Even if you believe the videomakers should have been exposed, I would hope you'd agree that abusing a totally unrelated law to do so would be a mistake, and (to us) seemed to go 100% against the things Ron Paul claimed to stand for. Thankfully, a judge quickly agreed and killed the lawsuit.

In writing about this, many of Paul's more ardent supporters trashed us both in our comments, and on various Ron Paul websites. I'm a little curious how they feel now, in a similar situation, where Ron Paul has turned his legal sights on them. As a whole bunch of folks have sent in, Ron Paul has filed a UDRP complaint against the site RonPaul.com, seeking to have WIPO turn over the domain to him. RonPaul.com has basically been the central source for the massive grassroots effort that supported Ron Paul in his last two Presidential campaigns -- leading many other candidates to envy Paul's ability to connect with the internet generation. The reality, of course, was much of that actually had to do with a few of his most dedicated fans, and their ability to spread his message via a series of grassroots websites, including RonPaul.com. To have Paul turn around and seek to have WIPO turn over the domain is incredible on so many different levels, once again suggesting that many of the things Ron Paul claims to have believed in go completely out the window at times -- even when it involves turning on the very people who built up his reputation.

Even more bizarre is that not only is he turning on his most ardent supporters and effectively taking them to court, but he's using WIPO, a part of the United Nations, to do so. Ron Paul hates the UN and would like the US to leave the UN. As he once said:

The choice is very clear: we either follow the Constitution or submit to UN global governance. American national sovereignty cannot survive if we allow our domestic laws to be crafted by an international body. This needs to be stated publicly more often. If we continue down the UN path, America as we know it will cease to exist.

And yet, here he is, running to the UN, and trying to forcefully take away a super successful site from his biggest fans supporting him, using the force of that same United Nations? Incredible.

Reading through the background and history, and then digging into the claims Paul's lawyer makes, suggests that Paul has made a huge mistake here. The backstory is that in a recent interview Paul expressed some minor regret that he did not hold the domain:

Alex Jones: Well, God bless you, sir, I hope we can get you back again in a month. What are any other websites that are important, just www.CampaignForLiberty.org?

Ron Paul: There’s that, and we’ll be listing some new things there because we’re making some other WebPages. I’m going to have a home page. Unfortunately, I didn’t have RonPaul.com, so I’m going to have to have RonPaulsHomepage.com. That will be coming up, but it’s not ready yet.

In response, some of his fans told the site's operators they should look to hand over the site. The operators noted that over the past 4.5 years, and through two high profile Presidential campaigns, they were at the center of building up massive grassroots support for Paul, and they had not had any request for the domain, but they were happy to talk it over:

On May 1st, 2008 we launched a grassroots website at RonPaul.com that became one of the most popular resources dedicated exclusively to Ron Paul and his ideas. We put our lives on hold and invested 4.5 years of hard work into Ron Paul, RonPaul.com and Ron Paul 2012. Looking back, we are very happy with what we were able to achieve with unlimited enthusiasm and limited financial resources.

As we haven’t heard from Ron Paul or his staff for several years we do not know if there is any tangible interest in utilizing RonPaul.com for Ron Paul’s new projects. We have prepared a cordial message for Ron Paul that we will gladly forward to him or to any person who credibly identifies himself as part of his current staff.

Eventually, they did get in touch with the campaign, and realizing that taking down everything that had already been on RonPaul.com would represent the dismantling of a very vital community, they hoped that he would accept RonPaul.org as an alternative for free. However, if he really wanted RonPaul.com, they were willing to give that up as well, including their massive mailing list of Paul fans, for $250,000 -- not an unreasonable sum for all the content and community they had built up over the years. You can see their full letter here or embedded below. It's very cordial, makes a strong argument for why disrupting the existing RonPaul.com would be a mistake that harms Paul's supporters and message, and makes those two offers. Perfectly reasonable.

In response, Paul and his lawyers didn't just reject the request, they actually use it against them, misrepresenting the offer, the site and the entire history, in a ridiculously misleading attempt to show malicious intent on behalf of the folks who run the site -- who most people would consider some of Ron Paul's most important supporters. The WIPO filing is really a guffaw-inducing piece of work. It doesn't just present one side of the story, it goes out of its way to imply things that are clearly untrue about those who run RonPaul.com -- suggesting that the whole effort was some sort of scam to extort money from Paul. A few quotes:

Respondents can demonstrate no legitimate purpose for registering domain names identical to Complainant's RON PAUL mark.

Other than, you know, building up a massive and widely envied internet grassroots support campaign for two high profile Presidential campaigns, as well as many of the key issues that Ron Paul (supposedly) believes in. Somehow, Paul's lawyers forget to mention that part.

There is no evidence that Respondents have used or in connection with a bona fide offering of goods or services.

Apparently trying to get Ron Paul elected is not something that Ron Paul considers a "bona fide" service.

They even imply that these guys only registered the domains to try to get Ron Paul to give them money for the domains. Apparently those 4.5 years of building up a massive and vocal grassroots online community supporting Ron Paul campaigns was just a ruse or something:

Under the UDRP, bad faith can be shown where the respondent registered the domain name primarily for the purpose of selling it to the trademark owner or to a competitor of that complainant, for consideration in excess of respondent's out-of-pocket costs.

This claim is clearly hogwash. Considering everything that's been done on the site, to argue that the "primary" reason to was to get Paul to pay up is laughable. It's made even more laughable by reading the actual offer to Ron Paul from the domain holders, in which they make it clear they'd rather not sell the domain at all, and offer him a free alternative. It is abundantly obvious that selling the domain was not the "primary" reason for registering the domain, and it was so far down the list that they asked him not to buy the damn thing at all.

Further evidence of bad faith comes from Respondents' registration and use of the domain names to intentionally attract Internet users for commercial gain by creating a likelihood of confusion with Complainant's RON PAUL mark... In this case, Respondents must have known of Complainant's famous mark prior to registering the domain names. Respondents registered the domain name, utilizing the Complainant's mark, in order to suggest to internet users a connection between the domain names and Complainant. This is misleading and supports a finding of bad faith registration.

[....]

There is a high likelihood that users will be confused and believe that Complainant is the website's source, sponsor, or is some way affiliated with or endorses the website. If not for this likelihood of confusion, the rental value of the domain names would be significantly decreased.

This claim of trying to create a likelihood of confusion might sound reasonable at a first glance... except that the handy dandy Internet Archive shows that, from way back when these supporters first launched the grassroots site, the site had a prominent disclaimer that noted they were not directly associated with Ron Paul. That link above shows you what the site looked like less than 3 weeks after the domain was registered. It has the following prominently marked:

Disclaimer
The RonPaul.com website is maintained by independent grassroots supporters of Ron Paul. Neither this website nor the articles, posts, videos or photos appearing on it are paid for, approved, endorsed or reviewed by Ron Paul or his Campaign. For Ron Paul's official website, go to RonPaul2008.com

That's in the sidebar. At the bottom there's the following disclaimer:

The RonPaul.com website is maintained by grassroots supporters. It is not paid for, approved, endorsed or reviewed by Ron Paul & Campaign.

In other words, from the very beginning, they were explicit that they were grassroots supporters, and not the campaign or the candidate. For Paul and his lawyers to argue otherwise is simply ridiculous.

Respondents later offered to sell to Complainant for $250,000 and to provide as a "free gift" with the purchase of .

This reaches a level that one might call "lying." The original letter is quite explicit. They would prefer not to sell RonPaul.com at all, and the offer of RonPaul.org for free was not "with the purchase of " but a no-strings-attached offer to Ron Paul if he wanted to use RonPaul.org as his future domain (since it would be less disruptive to his grassroots supporters).

When you read through all of this, it's really quite incredible. Not once does the filing even hint at what the domain has been used for over the past 4.5 years. If you read the filing without context, you'd think that it was solely devoted to a commercial site pretending to be Ron Paul's real site, and the entire effort was built up just to try to sell it to Paul. For a politician who built up his grassroots supporters in large part because of his authenticity and his willingness to speak honestly and truthfully about issues, to turn on his biggest supporters with a pile of hogwash, while clearly abusing a process he doesn't even believe in, to try to forceably take away the site from his fans... is incredible.

As the operators of the site themselves note:

Back in 2007 we put our lives on hold for you, Ron, and we invested close to 10,000 hours of tears, sweat and hard work into this site at great personal sacrifice. We helped raise millions of dollars for you, we spread your message of liberty as far and wide as we possibly could, and we went out of our way to defend you against the unjustified attacks by your opponents. Now that your campaigns are over and you no longer need us, you want to take it all away – and send us off to a UN tribunal?

Who knows who is advising Paul on this move, but this seems like a massive miscalculation. Maybe he doesn't care any more, now that he's out of Congress. Maybe he's decided that all those years of standing up as a principled politician can be thrown out the window because he really wants RonPaul.com. Either way, this seems destined to be a stain on his legacy.

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If You're Typosquatting Domain Names To Get Misaddressed Emails, Maybe Don't Target A 'Brand Protection' Law Firm

Mike Masnick — Thu, 28 Jun 2012 16:04:00 PDT

Via Slashdot, we learn of a lawsuit filed by a "brand protection and anti-counterfeiting" law firm, Gioconda Law Group, against Arthur Wesley Kenzie -- a guy who apparently has been registering typo versions of company domain names (typosquatting) and then receiving the emails received at those domains -- possibly using them to pitch his own "security" help to the companies. He did this to Lockheed Martin, who chose to just get the domain transferred to them via the UDRP process, but Gioconda is suing for "trademark infringement and unlawful interception of a law firm's private electronic communications." The trademark claims may make sense -- since you could argue that there's a likelihood of confusion. And, clearly, what this guy was doing was sleazy. But is it really "unlawful interception of a law firm's private" emails? That's where it seems much trickier. After all, he didn't actually "intercept" anything. They were sent to him. The "problem" is that the senders chose the wrong address.

Gioconda seems to be claiming that because the emails didn't bounce, he was guilty of setting up special email boxes to intercept the law firm's emails:

"We discovered the cybersquatting and sent several test e-mail messages... to see if they were delivered to the misspelled e-mail addresses, and indeed, they were received by active mailboxes."

But, uh, plenty of domains are set up to allow any email to be received by an active (usually admin or default) account. So the fact that the emails went to a live account, rather than a bounced account doesn't automatically indicate "unlawful interception." That said, it does seem like what the guy did was pretty questionable, but it just seems dangerous to set a precedent that having someone send an email to the wrong address is somehow an illegal "interception."

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Trademark Lawyers Push For Crazy New Domain Rules Making It Easy For Them To Take Away Others' Domains

Mike Masnick — Fri, 30 Mar 2012 10:51:33 PDT

IP maximalists now seem to be targeting ICANN as yet another way to overclaim their rights and block legitimate domains from existing. As we've been discussing, there have been several fights concerning the new generic top level domains (gTLDs) where we've seen folks like the entertainment industry demand extra special measures to keep them from being used to infringe copyrights. But the trademark folks may be going even further. We already have the (somewhat flawed) UDRP (Uniformed Domain Dispute Resolution Process) system for trademark holders to try to claim rights over a domain. This process lets trademark holders go through an arbitration process if they feel someone is abusing a trademark in a domain. In the past, we've discussed how this process is pretty sloppy, but it still heavily favors trademark holders. As in many arbitration situations, the big companies who bring back business to the arbitrators (magically) seem to win quite frequently.

However, that's just not enough for these trademark holders. Last year, for these new gTLDs, they were also able to establish a separate process, the URS (Uniform Rapid Suspension System) which, everyone was told, would only be used for the most egregious cases of trademark infringement -- the cases where it's so totally obvious that the domain in question infringes that the whole process can be cheap and streamlined.

However, before this process has even really been tested, trademark holders are trying very, very hard to basically lower the standards on URS and broaden the reach of it, such that it more or less replaces the UDRP process -- and thus makes it a system that lets trademark holders seize the domains of those they accuse of infringement very cheaply, with minimal review, and to also block certain words from being registered in domains. Even more incredible? They're abusing an ICANN comment process to push this plan (which ICANN had earlier rejected).

All of this came out recently in a letter to ICANN's board raising concerns about this effort. ICANN had opened up a comment period for a specific issue having to do with gTLDs, and the trademark folks went hogwild, asking for all of these other things, including:

Lowering the standard for when the simplified URS process (seize domains quickly, ask questions later) process can be put in place. Originally, the bar had been set high so that this process could only be used in truly egregious cases where there was no question that the domain was infringing. But the proposal sought to lower the standard such that it's the same as the UDRP standard (effectively stepping in and replacing UDRP).
Changing the already agreed upon URS system, such that domains that go through the process aren't just suspended, but transferred to the trademark holder. In other words, rather than just shutting down the domain, this fastpass system would simply turn the domains over to the trademark bullies.
Saying that the URS process (which was developed just for these new TLDs) should also be expanded to cover the most important TLD of all: .com. Yes, that's right. That's the goal in all of this. To actually make it much, much easier for trademark bullies to completely shut down and gain control of domains that they don't like others to use, and to do it cheaply, with very little review.

And they did all this by abusing a comment process that has nothing to do with these issues, and despite the fact that earlier hard-fought battles over these issues came out with them on the losing side. But, this is how IP maximalists work. They just keep trying every way possible to get the same ridiculous rules made in their favor.

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