Archive for the ‘Internet Law’ Category

According to SFGate, Hermes International SCA, maker of Birkin handbags and silk scarves, won a judgment that includes $100 million in damages against 34 websites that sold fake copies of its luxury goods.

U.S. District Judge Denise Cote in New York ruled the sites, which didn’t defend themselves in court, sold items that infringed upon at least nine Hermes products including Birkin and Kelly handbags, wallets, watches, belts and jewelry.

Cote said the websites, with names such as HermesBags- Outlet.net, HermesBirkin-Bags.org and HermesOutletStore.Com, were liable for federal trademark counterfeiting and infringement. They had also disregarded her previous temporary orders restraining them from selling counterfeit Hermes items, Cote said.

The court also ordered that any money held by PayPal Inc. to be given to Hermes and ordered Internet Service Providers (ISP’s) and merchant account providers, as well as third-party processors and search engines including Google Inc., Microsoft Corp.’s Bing and Yahoo! Inc., to immediately stop providing services to the defendants or links to their sites.

The judge also directed social media companies including Facebook Inc. and Twitter Inc. to “de-index” and remove from any search pages links to the infringing defendants.

The order to the search engines and to the social networking companies to de-index the sites is an interesting one.

@AndrewHazen

A dear attorney friend shared an article with me today that I found quite interesting given our recent success in selling products with daily deal sites….

Lawyers (of which I am one) who provide services to small businesses and individuals are particularly attracted to Internet applications that enable them to target potential clients before the client walks in the firm’s door.

Recently, the New York State Bar Association Committee on Professional Ethics issued an opinion in which it explored whether lawyers can market their services by using a deal of the day or a group coupon website. The committee’s opinion generally supported the use of these websites, offering attorneys yet another avenue to attract clients and develop new business, albeit with caveats and requirement as to how attorneys must conduct themselves in connection with these offerings under the Rules of Professional Conduct.

Based upon the facts, the committee opined as to whether an attorney may market legal services by participating in a “daily deal” or “group coupon” website. In its opinion, the committee pointed out that the use of a daily deal or group coupon website by a lawyer as a means of marketing legal services raises a number of issues:

• Whether the arrangement is an improper payment for a referral;

• Whether the amount received by a lawyer could, under certain circumstances, result in a prohibited excessive fee;

• Whether statements made by or on behalf of a lawyer are false or misleading or otherwise violate rules regarding lawyer advertising; and

• Whether the logistical arrangement of payment in advance for a legal service, before a lawyer has had the opportunity to check for conflicts or determine whether the lawyer is competent to perform the service and whether the client needs the service, constitutes a premature and improper formation of a lawyer-client relationship.

You can read the entire article here

@AndrewHazen

Domain Name Wire has reported today that Google has filed a UDRP against a 21 year old domain name: Gmai.com, which of course existed before Google created Gmail in 2004

Click here to read more about the UDRP that Google has filed

Looks like Ikea is successful again with another UDRP action….this time for wwwikea.com

From the decision:

“In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2004.

In accordance with the Rules, paragraph 5 (a), the due date for the Response was November 29, 2004. The Respondent did not submit any response. Accordingly, on December 1, 2004, the Center sent a Notification of Respondent Default to the Respondent notifying him that he had failed to comply with the above-mentioned deadline to submit his Response.

The Center appointed Mayer Gabay as the sole panelist in this matter on December 13, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. ”

Read the entire decision here

@AndrewHazen

According to Domain Name Wire, HEB Grocery Company, headquartered in San Antonio, is the first complainant to win a uniform domain name dispute resolution (UDRP) case for a .xxx domain name (HEB.xxx)

Atlanta resident Eric Gonzales registered the domain name after he claims to have contacted the grocery chain to see if they were going to register it.

Gonzales’ approach is certainly interesting. Here’s how the World Intellectual Property Forum panel summed it up:

Respondent is an individual, located in the U.S. state of Georgia, who indicates that he was doing “extensive research for a TV news report on businesses that have not registered .XXX domains with possible variations close to their names.” Respondent states that he contacted several businesses that bought .XXX domains after he brought the matter to their attention but that Complainant was not one of them so he bought the disputed domain because of Complainant’s failure to exhibit a proactive approach. Respondent states that he was later contacted by counsel for Complainant “DEMANDING” he relinquish control over the disputed domain but that Complainant never asked. Respondent states “Everything would have been avoided if they would have asked.”, because then he “would have gladly GIVEN” them the domain. Respondent noted several policies involving the .XXX gTLD which cause him to question the general availability of domain sites if they are allowed to be taken away by companies that fail to block the initial purchase. Respondent stated that he could have avoided dealing with this legal issue and consulting legal advice if Complainant had taken steps to block his purchase.

Another strike against Gonzales: he admitted he’s not part of the sponsored community (adult sites).

@AndrewHazen

A World Intellectual Property Organization panel has awarded Twitter the domain name Twittr.com in a uniform domain name dispute resolution policy (UDRP) proceeding.

Twittr.com was originally registered before Twitter’s “first use in commerce” date on its trademark for “Twitter”. Although Twitter says it actually started the service prior to this first use date, it was a moot point in this case because the current owner purchased the domain after the first use date.

The owner of the domain, identified as 21562719 Ont Ltd a/k/a Galt Networks Inc., did not respond to Twitter’s complaint. The registrant acquired the domain after Twitter purchased the Twitter.com domain name.

You can read the entire WIPO decision here

@AndrewHazen

A Dallas firm has sued an anonymous “Ben Doe” who allegedly wrote a negative Google Review about the firm, a case that highlights the difficulties lawyers face when trying to address online comments.

The Lenahan Law Firm seeks to collect $50,000 from “Ben,” who wrote the review that reads, “Bad experience with this firm. Don’t trust the fake reviews here,” the plaintiff alleges in its petition in In Re “Ben Doe.”

“Discovery will include an investigation into the identity of ‘Ben,’ ” the firm notes, adding that a “subpoena will be served upon Google immediately.”

In the petition, filed Dec. 22, 2011, in Travis County’s 98th District Court, the firm alleges the review is defamatory because it “implies professional incompetence” and “alleges dishonesty and fraudulent conduct by the Plaintiff, though the ‘fake reviews’ were written by actual clients and are bona fide.” [See the Lenahan petition.]

Lenahan Law Firm partner Wes Black says he does not even think “Ben” was a client of his firm. The firm found a review of a cleaning company written by someone under the same online profile. Based on that, Black thinks the reviewer lives in Oregon, and the firm has never represented a person in Oregon.

@AndrewHazen

Virgin boss Richard Branson is attempting to gain control of the domain RichardBranson.xxx.

The company took the action after an individual unconnected with the company registered the name.

“We have a complaint against the owner of RichardBranson.xxx,” a Virgin spokesman said.

The .xxx top-level domain launched last year after considerable debate. Virgin said it was spending an increasing amount of time protecting its brands, including the Branson name, online.

In order to win control of the domain Virgin has filed an application with the National Arbitration Forum, a body which deals with domain name disputes.

Virgin’s claim will turn on factors such as whether the original registration was in good faith and what legitimate interest the present owner may have to the use of the name.

I’ll let you know what happens…..stay tuned!

@AndrewHazen

Pearl Jam frontman Eddie Vedder is trying to secure the web address EddieVedder.com. According to Fusible, a complaint (WIPO Case Number: D2012-0035) was recorded this past week with the World Intellectual Property Organization regarding the domain name. EV Touring, Inc., which owns the trademark of Eddie Vedder, is the complainant in the domain debate.

Fusible states that what stands out about this particular grievance is that according to WHOIS records, Pearl Jam owned the domain eddievedder.com in the mid-2000s through late 2010, at which point the domain name was transferred over to Whois privacy. So, Vedder perhaps forgot to make payment to keep the site, and somebody took notice and lapped it up, likely hoping to make profit.

Aftermarket, which is an online shopping space for various domain names, has EddieVedder.com listed for sale for at a steep $18,400!

Best of luck Eddie, I truly hope you get your name back and keep on rockin in the free world!

@AndrewHazen

Central Michigan University continues to buy up .xxx domains and recently completing its purchase of a third and waiting on final approval of a fourth…

In an effort to prevent adult companies from using branded names and trademarks, the nonprofit group Internet Corporation for Assigned Names and Numbers (ICANN) allowed universities, businesses and groups back in October, 2011, to buy up domain names that end in “.xxx”.  Since then, Universities across the country have raced to buy all related domains ending in .xxx. Adult websites have been known to use the image and logos of popular universities to create college-themed material. Under law, new adult websites are required to register their domains ending in .xxx.

The Detroit Free Press reported that CMU was among the first schools to snatch up .xxx domains, along with Penn State University, Purdue University, the University of Pittsburgh, Carnegie Mellon University and Indiana University.  The University of Michigan bought 21 .xxx domain names in December, 2011 as an effort to protect the school’s identity. U-M spent $28,000 to reserve 14 .xxx domain names, according to the report.

According to Steven Smith, the school’s Director of Public Relations, “The reasoning for the purchase is to protect the university from inappropriate use of its name.”  Smith went on to say that “in addition to protecting the CMU image, purchasing .xxx domain names will help prevent users from coming across adult websites while searching for university-related events or pages.”

Without a doubt, people will get confused and it appears as though Universities and businesses are proactively procuring brand and trademarked-related .xxx domain names as opposed to being reactive… Are you protected??

@AndrewHazen