Laws of .com

Volume VII, Issue 6: March 26, 2009

Cybersquatting on the Rise

Domain Name Dispute: Extremefitness.ca

Google to Introduce Interest Based Targeted Ads

Survey Shows Privacy on Web as Major Issue

China and U.S. Accept WTO Settlement on Intellectual Property

UK Newspapers May Continue to be Sued Multiple Times Over Same Story

Cybersquatting on the Rise

A recent report indicates that a record number of “cybersquatting” cases were filed in 2008 by persons, including many well known entities and individuals, seeking to prevent others from abusing their names. Names included the likes of Yale University, Arsenal Football Club and actress, Scarlett Johansson. The World Intellectual Property Organization (WIPO) handled 2,329 disputes relating to domain names in 2008.

The number of cybersquatting cases will most likely continue to rise, as the Internet Corporation for Assigned Names and Numbers (ICANN), a not-for-profit organization which manages the distribution of domain names with the current generic top level domains (gTLDs) (such as .com and .gov), is preparing to launch many new gTLDs, which would result in a large increase in the number of available domain names. This raises concerns for trade-mark owners, as it significantly increases the task of preventing the abuse of trade-marks through cybersquatting. WIPO is working with ICANN on procedures intended to help avoid future litigation relating to the new gTLDs.

For additional information, visit:
http://www.washingtonpost.com/wp-dyn/content/article/2009/03/15/AR2009031501672.html

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Domain Name Dispute: Extremefitness.ca

A Canadian Internet Registration Authority (“CIRA”) panel recently heard a dispute regarding the domain name “extremefitness.ca”, owned by Gautam Relan (“Relan”). Extreme Fitness Inc. (“Extreme”), a Toronto area fitness club, is the owner of the registered trademark “EXTREME FITNESS (design)”, an unregistered mark “EXTREME FITNESS” and a similar trade name, as well as the domain name “extremefitness.info”. Relan is an individual who was a member of one of the Extreme Fitness Clubs in January 2005, which coincides with the date of registration of his domain name. As of August 2008 Relan was using the domain name to redirect users to the website “ripoffreport.com”, a consumer protest site.

The CIRA panel determined that the disputed name was “confusingly similar” to the mark to which Extreme had rights and used prior to the registration. Even though Extreme did not formally register the EXTREME FITNESS mark until after Relan registered the domain name, the CIRA panel ruled that Extreme had rights in the mark prior to that date, on the basis of use in magazine articles, print advertisements and promotional materials which pre-dated the domain name registration.

The CIRA panel ultimately ordered the domain name to be transferred to Extreme. In addition to the finding that the domain name was confusingly similar, the panel also determined that Relan had no legitimate interest in the domain name and it had been registered in bad faith.

For additional information, visit:
http://www.it-can.ca/newsletters/032009.pdf

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Google to Introduce Interest Based Targeted Ads

Google has announced plans to offer display ads to web surfers using “interest based advertising”, a form of behavioural targeting. Behavioural targeting generates ads based on user’s interests and online behaviour by using cookies to track what websites users visit. Google’s interest based advertising differs from its competitors’ behavioural targeting, such as Yahoo and Microsoft, in that Google plans to allow web users to view and change what interest based categories they are assigned online. By showing users display ads in respect of topics that interest them, the display ads will likely be more useful and generate greater revenue when users click on them, allowing Google to charge more for such targeted ads.

Privacy advocates are concerned that behavioural targeting could violate users’ privacy, and that Google’s entry into this market may be especially damaging as Google is dominant in the online search industry and has collected a wealth of sensitive information about web users. In addition, rather than expressly requiring users to agree to behavioural targeting, Google will require users to take an extra step which many users will not take; namely, users have to opt-out if they do not want to be subject to interest based advertising.

For additional information, visit:
http://www.guardian.co.uk/media/2009/mar/11/googlethemedia-google

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Survey Shows Privacy on Web as Major Issue

A recent survey of 1,000 Americans by TRUSTe, an organization that oversees the privacy practices of member organizations, indicates that online privacy remains a dominant concern among web users, highlighting the need for some form of regulation to protect web users and their data. However, there is a disconnect in awareness; for example, only 15 percent of respondents read website privacy statements, and fewer than half frequently checked whether websites even had privacy statements. The survey also indicated that more than half of the respondents said that the government should be “wholly” or “very responsible” for protecting an individual’s online privacy.

The Commissioner of the U.S. Federal Trade Commission (FTC), reflecting the views of the respondents, has warned that if private industry groups do not sufficiently self-regulate to protect web users, the government may have to legislate more robust safeguards into effect, including a requirement that web sites disclose when behavioural advertising is used and that users’ prior consents be obtained. Consequently, some companies have taken the initiative to protect online privacy. For example, Yahoo has shortened the time period for retaining users’ search data, while Google allows users to see what information is gathered about them for advertising purposes.

For additional information, visit:
http://www.nytimes.com/2009/03/16/technology/internet/16privacy.html?_r=1

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China and U.S. Accept WTO Settlement on Intellectual Property

Last week both China and the United States accepted a final decision of the World Trade Organization (WTO) Dispute Settlement Body in a case over the protection of intellectual property rights initiated in 2007 by the United Sates. The U.S. alleged that China was failing to implement enforcement measures in accordance with its obligations under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement.

The WTO decision was split, with both states achieving some success. The Panel found that China did violate TRIPS by refusing copyright protection for media not approved for sale by state censors, and by public sales of counterfeit goods from which a trade-mark was merely removed. However, the Panel rejected allegations that China was failing to enforce criminal copyright protection laws and that the threshold for enforcement of these criminal sanctions was too high.

The acceptance of the WTO decision by both governments means that the matter will not be appealed by either nation. The onus will now shift to China to report on how it intends to implement the Panel’s recommendations.

Foradditional information, visit:
http://www.reuters.com/article/technologyNews/idUSTRE52J3T920090320

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UK Newspapers May Continue to be Sued Multiple Times Over Same Story

Under English law, the “Internet publication rule” allows a person to bring a libel action each time a person is able to access libelous information archived on the Internet. Critics of the rule argue that it has a chilling effect on UK news outlets, since they can be exposed to liability multiple times over the same story. To the dismay of media lawyers, the European court of human rights recently reviewed the rule, and upheld it. In this case, the Times was sued for libel twice by the same man over a story alleging money laundering that appeared first in print and later in Internet archives on the Times website. The Times argued that the Internet publication rule which allowed the second suit breached the right to freedom of expression, was out of step with international libel laws, and would have a chilling effect on the news. The court declined to consider any chilling effect, and held that there was nothing wrong with a rule which helped ensure responsible journalism. The Times is expected to appeal the judgment.

For additional information, visit:
http://www.guardian.co.uk/media/2009/mar/10/times-european-court-single-publication

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