TSTV: The World's Unluckiest Domain-Name Disputer?
By Steven Bonisteel, Newsbytes
TORONTO, ONTARIO, CANADA,
13 Apr 2001, 5:19 PM CST
Wresting Internet addresses from so-called cybersquatters appears to be as
easy for
some companies as shooting fish in a barrel.
In a little over a year, for example, Internet companies America Online and
Yahoo
and Australian phone company Telstra have each harvested dozens of domain
names using
a speedy dispute- resolution procedure created by the Internet Corporation
for Assigned
Names and Number (ICANN).
Those companies rarely - if ever - lose their bids under ICANN's Uniform
Domain Name
Dispute Resolution Policy (UDRP) to claim Internet addresses that sound
like their
trademarked names, even when it might take a stretch of the imagination to
make the
connection, such with Yahoo's successful claim on YaYou.com.
But such easy success is not the case for Canada's Toronto Star newspaper
company
and its specialty cable TV channel, Toronto Star Television (TSTV).
Late last year, the company turned to the United Nations backed World
Intellectual
Property Organization (WIPO), one of four organizations authorized to
arbitrate UDRP
cases, in a bid to protect its TSTV trademark and claim the address
TSTV.com from
porn-site operator Virtual Dates of Boynton Beach, Fla.
Turned out, however, that "TSTV" is also an acronym for
"transsexual/transvestite"
and so was deemed to be appropriate for Virtual Dates' racy Web business.
In January, the company lost a second dispute in an almost identical
decision over
the address TSTV.tv, registered by another adult-site operator using the
newly commercialized
dot-tv domain space of the Pacific island nation Tuvalu.
Although the Tuvalu domains do not fall under ICANN's umbrella, WIPO's
Arbitration
and Mediation Center referees disputes for many such country-code top level
domains
(ccTLDs) using the UDRP approach.
Undaunted, Toronto Star lawyers turned again to WIPO recently with another
cybersquatting
claim. But this time, with the domain TorontoStar.tv as a target, the case
appeared
to be a slam-dunk.
One of the first two dot-tv cases filed in 2001 (the first was a dispute
over Nasdaq.tv),
the Toronto Star's complaint seemed to have all the elements UDRP
arbitrators look
for. In addition to an address that was "confusingly similar" to its
well-known name,
the Toronto Star could also point out that the current holder of the
domain, Capital
Networks Ltd. of nearby Markham, Ontario, a provider of video systems for
broadcasters
and closed-circuit programmers, knew the specialty-cable network well.
What's more, while Capital Networks said it planned to launch an
entertainment and
information service at the address, the domain has yet to be pointed at a
Web site
other than that of the dot-tv registrar.
Ironically, the failure of a domain holder to make use of an address was
what helped
Australia's Telstra win the first of its long line of UDRP decision.
That case, over the domain Telstra.org - the third of what has become
thousands of
disputed addresses brought to WIPO - resulted in one of the UDRP decisions
most-often
quoted by other arbitrators. And it was the precedent cited by WIPO
arbitrator Scott
Donahey in finding in favor of the Nasdaq Stock Market in the Nasdaq.tv case.
But for the Toronto Star, victory was not to be.
Arbitrator Edward Chiasson, a Canadian lawyer, ruled that the domain
TorontoStar.tv
was "confusingly similar" to the Toronto Star's well-known name, but that
there wasn't
sufficient proof that Capital Networks held the domain in "bad faith," a
finding
that is a requirement for successful UDRP complaints.
Even though Capital Networks had hinted it would sell the domain to TSTV,
Chiasson
decided, there was no evidence that the company was essentially holding the
address
for ransom.
Chiasson also ruled that the fact Capital Networks wasn't using the domain
didn't
prove it might not have a legitimate use for it later.
In an interview with Newsbytes over another WIPO case, Internet law expert
Michael
Geist said that it is still not clear how the notion of precedent is being
applied
under UDRP decisions, which cannot be "appealed," other than by launching
separate
actions between the combatants in court.
"About a quarter of the cases (refer to precedent)," said Geist, a
professor at the
University of Ottawa Law School. "I'd like to see a higher number.
"There has been criticism levied at the (UDRP), because there have been
those who
have perceived there to be a bias in favor of complaints," he said.
"However," Geist said, "I see trademark lawyers ­ those who would typically
represent
the complainants ­ say: 'In the absence of relying on precedent and
consistency in
the decision-making process, this is a policy I can't recommend to my
clients, even
though they're winning at an 80 percent rate, because I'm not in the
process of gambling.
I'm in the business of trying to tell my clients, here's what you have to
prove,
here are the criteria, and if you do it, chances are almost certain that
you're going
to win.'
"The (UDRP) process, at the moment, doesn't provide that because of the
inconsistencies,"
Geist said. "Relying on precedent is one way to better insure that there is
a consistent
decision-making process."
Reported by Newsbytes.com,


Justin........
My hindsight is 20/20.........



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