Subject: [NEXTEL-1] ACLU Goes To Battle With Nextel On Behalf of "NEXTELSUCKS.ORG"

From: [email-masked]
Date: Sun, 17 Aug 2003 02:49:43 -0400

ACLU Goes To Battle With Nextel On Behalf of "NEXTELSUCKS.ORG"

Here is the original letter from Nextel's attornty telling the website owner they
are infringing on Nextel's name-
 http://www.nextelsucks.org/legalletter.htm

ACLU to Nextel-
--------------------------------------------------------------------------------------------------------------------------------

>From Michael J. Steinberg Thu Jul 10 09:19:21 2003

Dear Ms. Blount.

We have been contacted by the person who owns the domain name and Website entitled
www.nextelsucks.org.  Apparently, you emailed her a letter on behalf of Nextel
demanding that she transfer the domain name to Nextel because use of the name
violates federal trademark laws, the anti-Cybersquatting Consumer Protection Act,
15 U.S.C. § 1125(d); federal anti-dilution laws, 15 U.S.C. § 1125(c); and federal
unfair competition laws, 15 U.S.C. § 1125(a).  (See copy of email reproduced
below).   Similar arguments about a website called taubmansucks.com were recently
rejected by the Sixth Circuit in Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir.
2003)(see copy of opinion attached).

The court held that the domain name was constitutionally protected speech: "We
find that the domain name is a type of public expression, no different in scope
than a billboard or a pulpit, and Mishkoff has a First Amendment right to express
his opinion about Taubman."  Id. At 778.  It appears to me that the owner of
nextelsucks.com, like the owner of taubmansucks.com, has a First Amendment right
to express herself through the domain name and that the Taubman Co. case is
controlling.   Please let me know if you disagree.

 Michael J. Steinberg, Legal Director

American Civil Liberties Union of Michigan

60 West Hancock St.

Detroit, MI 48201

(313) 578-6814

fax (313) 578-6811

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From: [email-masked]
Date: Tue, 19 Aug 2003 13:35:23 -0400

> Subject: Re: [NEXTEL-1] ACLU Goes To Battle With Nextel On Behalf of "NEXTELSUCKS.ORG"
>
> Date: Tue, 19 Aug 2003 11:57:59 EDT
> From: [email-masked]
> To: [email-masked]
>
> I believe that you misunderstood my original point, which was that there is a
> difference or opinion on this issue through the various circuits and with ICANN
> arbitrators.  The Taubman case is a Court of Appeals case in the Sixth Circuit,
> but that does not make it controlling precedent in another circuit.   So, for
> example, there is a different decision recently by a mediator in the
> Walmartsucks case: http://www.computeruser.com/news/00/08/03/news6.html
>

I understood your original post. The opinion of ICANN (Lame Duck) is irrelevant
since they are only a non-profit corporation that assigns IP address, domain names
and settles domain disputes (In their own mind). ICANN / UDRP provides for a
“administrative proceeding” for dispute resolution. The administrative
decisions of their assignee(s) (WIPO or equiv) holds little water when commencing
a NEW Federal action. The WIPO (or equiv.) decision is not binding authority, and
the Federal action will be treated as a de novo adjudication. Even if the parties
are ordered into "Binding Arbitration" UDRP has a loophole, which has made many,
ask why bother?
------------------------------------------------------------------------------------------------------------------

UDRP also explicitly provides that a UDRP proceeding does not bar a subsequent
court proceeding. UDRP
4(k) states in part:

Availability of Court proceedings. The mandatory
administrative proceeding requirements set forth in
Paragraph 4 shall not prevent either you [the domain name
registrant] or the complainant from submitting the dispute
to a court of competent jurisdiction for independent
resolution before such mandatory administrative proceeding
is commenced or after such proceeding is concluded.
---------------------------------------------------------------------------------------------------------------------------

So there you have it from the "Lame Duck" itself.........Quack!

I never said the Taubman case was "controlling precedent"  It clearly defines the
test for infringement under the Lanham Act. I could have used the "ballysucks.com"
to make a similar case.

>
> and a similar discussion at:
> http://www.haledorr.com/publications/pubsdetail.asp?ID=754207312001

Again Quack!

>
> and http://news.com.com/2100-1023-268666.html?legacy=cnet

I did not see from whom he won the rights to keep the name from.

>
>
> A nice article is found here: http://www.ivanhoffman.com/protest.html

Again, the analysis is based on a "Panel"  (ICANN / UDRP) that is all "Bark" and
no bite.

"Outside of the court’s ruling in Parisi, it is unclear what precedential
value a court will give to a WIPO determination in a post-WIPO
proceeding. However, the other courts that have examined the issue
have also made it clear that the WIPO determination is, at very least,
not binding. In Weber-Stephen the plaintiff brought cyberpiracy and
trademark infringement claims in federal court concurrently with a
domain name transfer proceeding before WIPO. The defendant filed a
motion to “declare the administrative [WIPO] proceeding non-binding.”
2000 WL 562470 at *1. The defendant was concerned that the WIPO
proceeding would be found binding and the court’s “review” of the
WIPO decision would be circumscribed pursuant to the deference
accorded arbitrator’s decisions under the Federal Arbitration Act
(“FAA”). The court noted that “No federal court has yet considered
the legal effect of a WIPO proceeding.” Id. The court also noted that
WIPO had stated in an e-mail that its “decision is not binding upon a
court, and a court may give appropriate weight to the Administrative
Panel'’ decision."” Id. While the court found this WIPO language
“vague” and “rather unhelpful,” it also found that a WIPO decision
certainly did not enjoy the deference mandated by the FAA:"

"We conclude that this Court is not bound by the outcome
of the ICANN administrative proceedings. But at this time
we decline to determine the precise standard by which we
would review the panel’s decision, and what degree of
deference (if any) we would give that decision. Neither the
ICANN Policy nor its governing rules dictate to courts what
weight should be given to a panel’s decision, and the WIPO
e-mail message stating that “a court may give appropriate
weight to the Administrative Panel’s decision” confirms the
breadth of our discretion."

>
>
> Further, since the review is fact-based in each case, with issues like good
> faith, etc., and given the differences which have arisen in different cases, it
> is impossible to state that a "sucks" domain is or isn't ok.

It is possible that "Suck" will not be Ok. Given the predetermined bias of WIPO
arbitrator William Cornish who decided against five varied "sucks.com" sites on
the same day the UDRP has came to realise that "sucks" is a legitimate use
as demonstrated in wallmartcanadasucks.com case. UDRP has sided with companies in
certain cases.

We can debate the merits of (ICANN / UDRP) decisions but since any decision by
them
is non-binding.  I think another line of defense would be more appropriate on your
side.

> You cannot read the Taubman case in isolation, at least until such time as their
> is accord by all of the circuits, or there is a Supreme Court decision.

 I don't think Taubman is the panacea to all the "Sucks" cases but it does
illustrate the points of contention.

> Alan Tilles