The Internet Corporation for Assigned Names and Numbers (“ICANN”) is the organization that oversees domain names worldwide. It recently began accepting new applications for expanding the number of generic top-level domains (“gTLDs”) on the Internet. The most popular gTLDs until now have included .com, .info, .org, and .net. With the approval of applications for new gTLDs will come an unlimited number of new opportunities on the Internet for entrepreneurs of all types, including trademark infringers. Thus, trademark owners must make some decisions on how to address this new threat. One possibility is the new Trademark Clearinghouse.
On the heels of recent attempts to trademark a celebrity baby name comes the story of an attempt to obtain trademark protection for the name of a sports celebrity. Well, a variation of a sport celebrity’s name. This time, two trademark applications were filed last week for the mark LINSANITY — as in the current craze caused by Jeremy Lin, a player for the New York Knicks who is taking the sports world (and, arguably, the world) by storm. Lin, who had been a familiar face on the Knicks bench until very recently, scored 25 points during a game against the New Jersey Nets on February 4th. Since then, Lin has gone on to lead the Knicks in a string of victories. His last name has been converted into any number of new words to explain the sports phenomenon that is Jeremy Lin, such as “linsanity,” “linsane,” “linderella,” and “linferno.” Aside from spawning new vocabulary, Lin’s success is translating into sales. The media has pegged Lin as the “fastest growing athlete brand” and Lin’s No. 17 Knicks jersey is the top online seller for the NBA. The “linsanity” has now reached the U.S. Patent and Trademark Office, where two individuals (who are not Jeremy Lin) have applied to register the LINSANITY mark. Continue Reading LINSANITY: The Trademark
Not only is Newt Gingrich slipping in recent polls in his efforts to become the presidential nominee for the Republic Party, but he now has a domain name problem. As reported yesterday, the domain name <newtgingrich.com> has been registered by a pro-Democratic political action committee, American Bridge PAC. American Bridge bought the domain and programmed it to redirect to various Web sites. So, if you type <newtgingrich.com> into a web browser, you may be automatically redirected to Freddie Mac’s website, or to Tiffany’s (where Gingrich had a $500,000 line of credit) or even to a climate change ad featuring Newt Gingrich and Nancy Pelosi. Not good news for Gingrich, whose own website for his presidential bid is found at the more obscure domain name <newt.org>. On its website, American Bridge makes a tongue-in-cheek offer to sell the domain name <newtgingrich.com> “to someone with greater need than us” for anywhere between $1 million to $10,000 (saying that it cannot give the domain name away for fear of being branded as “socialists”).
Our question is: Why was <newtgingrich.com> available for registration in the first place? Continue Reading NewtGingrich.com: A Lesson in Defensive Domain Name Registration and Maintenance
Written by Jamison Arterton
Last month, the kitchen and bath giant, Kohler Co., filed an anti-cybersquatting suit in federal court in California against several cybersquatters. In its complaint, Kohler alleges that it previously paid the named defendants $500 to transfer a domain name incorporating the KOHLER trademark in exchange for their agreement that they would not register any additional domain names containing the KOHLER mark in the future. Despite this agreement, according to the complaint, the defendants subsequently registered four additional infringing domain names and demanded a payment of $1000 for their transfer.
Kohler is not alone in its decision to seek monetary damages in federal court rather than the transfer of the domain names pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP). Trademark owners continue to use the Lanham Act as a means of both reclaiming improperly registered domain names and, hopefully, deterring future infringement. In July, for example, Facebook filed a complaint against 23 defendants and John Does 1-119 for cybersquatting, contributory cybersquatting, trademark infringement, contributory trademark infringement, false designation of origin and contributory false designation, trademark dilution and contributory trademark dilution, breach of contract and tortuous interference with economic advantage. Facebook has also used (when appropriate) the UDRP system to secure the transfer of numerous infringing domain names that contained typographical errors of the FACEBOOK trademark.
These recent cases highlight the limitations of the UDRP. UDRP proceedings are favored as a quick and relatively inexpensive way to handle domain name disputes, with filing fees ranging from $1,500 to $5,000 depending on the number of domain names involved and resolution generally within sixty (60) days of filing. However, while the UDRP system allows a complainant to file a single complaint against a respondent concerning multiple domain names, it does not permit a trademark owner to seek the transfer of multiple domain names owned by multiple registrants. Nor does it grant relief beyond awarding the transfer of the subject domain name to the complaining party/trademark holder. In contrast, actual and/or statutory damages, injunctive relief and attorneys’ fees may be available through litigation. While monetary remedies available only through litigation traditionally have provided a greater deterrent and potentially prevented serial cybersquatters from registering additional domain names that include famous and/or well-known trademarks, this may, however, be changing. With the introduction of the .XXX gTLD, repeat cybersquatters may be banned from future registration of .XXX domain names. A similar policy applied to other gTLDs could provide the UDRP system with the proverbial “stick” that complainants presently seek from the courts against serial cybersquatters.