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Client Successes

Arbitrator Awards Web Site Domain to AJLI

05/15/2007

An arbitrator has awarded the Internet domain name JL.org to the Association of Junior Leagues International Inc. (AJLI). In a decision dated January 4, 2007, a panel of the National Arbitration Forum held that operation of a “parked” website at www.jl.org by the respondent did not constitute a bona fide commercial use, and that AJLI was entitled to ownership of the name by reason of its federal service mark registration for the acronym “JL” used by AJLI and its predecessors for 105 years.

The decision is a significant victory for AJLI and trademark owners generally because it fires a shot across the bow of the 1.5 billion dollar domain name “monetization” industry. Domain name “monetizers” register massive numbers of names incorporating well known trademarks and use them for websites containing advertising and links to third-party sites. Also known as “domainers,” these speculators collect advertising revenues from search engines on a pay-per-click basis in return for each “hit” that they send to the website of advertisers who in turn pay the search engines.

To avoid identification and service of process, “domainers” typically register their names in the guise of fictitious entities with false addresses and other fraudulent contact data. According to the arbitration complaint filed by AJLI under the Uniform Domain Resolution Policy (UDRP), observations increasingly confirm that domain name “monetization” is a “euphemism for a billion–dollar industry based on daisy chains of circuitous pay-per-click payments among and between fictitious and anonymous domain name registrants, ostensibly located in far-flung geographic locations.”

When confronted by the owners of “monetized” trademarks, “domainers” typically argue that the domain name in question, in this case “JL.org,” could refer to any number of parties, such as Jennifer Lopez, John Lennon, or JL Audio. Based on caselaw holding that it is not per se illegal to speculate in the secondary market for domain names, “domainers” argue that they can’t be charged with “cybersquatting” because they lack the requisite “bad faith intent” to profit from the goodwill associated with any particular trademark. The respondent in this case thus claimed – no doubt correctly – that he had acquired “JL.org” for “thousands” of dollars and that it was worth “five figures.”

AJLI argued that the respondent''s position was equivalent to that of the defendant who shoots into a crowd but claims he cannot be charged with intentional conduct because he did not know the individual who was hit by the bullet. The arbitrator agreed.

The arbitrator’s decision transfers the jl.org domain name to AJLI and will enable the organization to use the website at www.jl.org.