Film Company Wins thesimpsonsmovie.com From Cybersquatter. Doh!

By Dugie Standeford for Intellectual Property Watch
As the “Simpsons Movie” rolls out on silver screens across the United States and Europe, word comes that its maker, Twentieth Century Fox Film Corporation, has won the rights to the domain name “thesimpsonsmovie.com” from a stand-up comedian who failed to strike the international arbitrator’s sense of humour.

On 22 July, an arbitrator from the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre ordered Brooklyn, New York stand-up comic Keith Malley to transfer the name to the studio, saying he has no legitimate right to it. The ruling was issued under the Uniform Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN), the entity charged with overseeing the Internet domain name system.

The decision noted that in addition to its many US and global trademarks relating to long-running television series The Simpsons, Fox owns the domain name “simpsonsmovie.com.” Malley registered “thesimpsonsmovie.com” and used it to funnel Internet users to his website called Keith and the Girl. He also sold merchandise featuring his comedy routines.

Malley had earlier used the domain to point to a website featuring “off-colour and in some cases sexually explicit depictions involving several characters” from “The Simpsons” television series, panellist William Towns wrote. When Fox contacted him about the website, Malley offered to sell it for $50,000. Fox took the case to WIPO, alleging the domain was confusingly similar to its trademark. Malley did not respond to the claim.

A finding under the UDRP that a domain name has been abusively registered requires proof of three elements, the arbitrator noted: That the domain is identical or confusingly similar to a trademark in which the complainant has rights; that the owner of the disputed name has no rights or legitimate interests in the domain; and that the name has actually been registered and is being used in bad faith.

“Thesimpsonsmovie.com” is confusingly similar to Fox’s trademarked “The Simpsons” because it incorporates Fox’s trademark in its entirety, Towns wrote. “The mere addition of a generic or descriptive word such as “movie” does not diminish the confusing similarity,” he said.

Malley had no right or legitimate interest in the disputed domain because he is not connected to Fox and had no authorization from the studio to use the name, Towns ruled. Moreover, the name was clearly registered in bad faith: Malley was “well aware” of Fox’s mark when he bought the domain, and his aim was to exploit the trademark by enticing surfers seeking Simpsons-related products and services to his own site. Malley was ordered to transfer the domain to Fox.

WIPO Continues Emphasis on Online Drug Rulings

WIPO arbitrator Nicoletta Colombo reached a similar decision on 9 July in F. Hoffmann-La Roche AG v. Bobik Marley. Marley, who also failed to respond to the UDRP complaint, purchased “buy-valium-a.info,”“buy-valium1.info”and “cheap-valium-a.info.”

Hoffman-La Roche argued that the names were too close to its trademark for the sedative, and Colombo agreed, saying the added words “buy” and “cheap” were not enough to distinguish the names from the pharmaceutical giant’s trademark. Because Marley used the names to trade on Hoffmann-La Roche’s fame by diverting Internet users to his own websites where advertising space was sold, his registration was found to be in bad faith and he was ordered to shift the names to the drug company.

Anti-Cybersquatting Campaign

Meanwhile, cybersquatting is apparently hitting the business community so hard that ten major companies announced plans on 24 July to lobby the US Congress, WIPO and ICANN to toughen laws and penalties addressing the problem.

The Coalition Against Domain Name Abuse (CADNA), whose charter members include Dell, Eli Lilly, HSBC, Marriott and Yahoo, said the increasing assault on trademark owners’ IP rights is enabling scams such as phishing, spyware and spam. CADNA members are particularly incensed over the alleged exploitation by Web bandits of the five-day grace period domain-name registrars have to correct or cancel inadvertently faulty registrations. Scammers use the five days to snap up domain names, “taste” them to see how much traffic they attract, or “kite” them by registering large numbers of names, placing advertisements on the sites, gaining revenue from them, and then dropping the unprofitable ones.

CADNA is seeking stronger penalties in the US Anti-Cybersquatting Consumer Protection Act, a WIPO anti-cybersquatting treaty, and ICANN action to close the registration loophole. It does not appear to have a taken a position on whether the UDRP also needs revisiting.

The exponential growth of cybersquatting has “highlighted some shortcomings in the policy and the process as it exists today,” said Phil Lodico, a managing partner at Washington, DC, Internet strategy consulting firm FairWinds Partners. The UDRP was intended to give trademark holders an avenue for gaining possession of infringed domains, but in practice, it is expensive and time-consuming, he said.

Moreover, while the process addresses domain ownership, it does not touch on the damage domain name abuse causes businesses and consumers, Lodico said. “We need better policies to curb cybersquatting and better processes to obtain ownership of infringing domains quickly while also recuperating damages where appropriate,” he told Intellectual Property Watch.

Dugie Standeford may be reached at info@ip-watch.ch.