Uniform Domain Name Dispute Resolution Policy

 By: Susan Neuberger Weller

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.

Continue Reading The New Generic Top-Level Domains and the New Trademark Clearinghouse: Deciding Whether to Register Your Brands

Written by: Ben Wagner

Five steps to protect a marks’ value

Trademark owners have a duty to police their mark.  This applies to all types of marks – brand names, slogans, color, product shapes, or even a smell.  The cost of dropping the ball on this duty can range from a bar on future enforcement of your rights against a particular company to a complete loss of all trademark rights.  As a practical business reality, the value of marks that are not policed and their associated goodwill are always in danger.

This duty includes policing (1) for unauthorized uses of a mark, (2) for uses of confusingly similar marks, and (3) uses by approved trademark licensees.  This blog post covers the first two types.

Continue Reading A Primer on Policing Your Trademark

Written by Susan Weller

Do you “google?” That is the essence of the question before the Federal District Court in Arizona in a Complaint filed on May 21, 2012 by David Elliott against Internet search engine giant Google, Inc. In Elliot v Google, Inc., CV-12-1072-PHX-MHB, Elliot claims that Google’s once distinctive mark GOOGLE® has become generic and lacks trademark significance due to its common use as a transitive verb. After losing to Google in UDRP proceedings involving many “Google-related” domain name registrations that he owns, Elliott now seeks a declaratory judgment that his domain names are rightfully his, that they do not infringe any trademark rights Google may own, and that all Google’s registered GOOGLE® marks should be cancelled since “google” is now a common generic word worldwide that means “to search the Internet.” Continue Reading Is It Proper To Say You Google On GOOGLE®?

Time is running out to apply for the Internet Corporation for Assigned Names and Numbers’ (ICANN) new program to dramatically expand the number of generic top-level domain names (gTLDs).  This controversial program has the potential to add countless new names to the currently available top-level domains (like .COM and .NET) by allowing companies to apply to serve as registries for a virtually unlimited list of new gTLDs.  If your company or client is considering applying for a new gTLD, the time to act is now.  Though the application period does not end until April 12, 2012, potential applicants must register with ICANN’s TLD Application System by Thursday, March 29, 2012.  Tens days left.  That doesn’t leave a lot of time to weigh the pros and cons of the new scheme….

To read more background on the new gTLD launch, please click here and here.  Though ICANN has “reaffirmed” its commitment to open a second application period for new gTLDs, it has yet to announce when such a second window would be opened.

Meanwhile, the number of cybersquatting/domain name disputes continues to rise.  The World Intellectual Property Organization (WIPO) announced that, in 2011, trademark holders filed a record 2,764 cybersquatting cases with the organization.  Will the launch of new gTLDs reverse this trend or simply provide new fertile ground for domain name disputes?  Only time will tell.

Written by Jamison Arterton

ICANN has recently appointed the World Intellectual Property Organization (WIPO) to be the exclusive provider of dispute resolution services when a third party files a formal “Legal Rights Objection” or “LRO” to a pending application under the new gTLD program. 

In assessing the validity of an LRO, the WIPO panel will decide whether the applied-for gTLD (i) takes unfair advantage of the unique character or the reputation of the objector’s registered or unregistered trademark, intergovernmental organization (IGO) name or acronym, or (ii) without justification, the gTLD impairs the distinctive character or the reputation of the objector’s mark, IGO name or acronym, or (iii) creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark, IGO name or acronym. Continue Reading WIPO Named Exclusive Arbitrator of “Legal Rights Objections” for New gTLD Program

Written by Jamison Arterton

Last week, ICANN began accepting applications for its new gTLD program. ICANN has posted a series of extremely comprehensive materials outlining the registration and evaluation process.  A copy of those materials can be found here.  The following brief summary of the application process is geared toward trademark holders seeking to protect their trademark rights during this process:

The user registration period for new gTLD applicants is open until March 29, 2012.  The application period itself closes on April 12, 2012.  Applicants wishing to register a new gTLD extension must provide the following:

  • Payment of $185,000 filing fee (a non-refundable $5,000 registration fee is due at the time of filing and a subsequent $180,000 fee is due at the time of application submission)
  • Satisfactory completion of background screening for criminal record or history of abuse of domain names
  • Technical requirements to operate the TLD in a secure and stable manner
  • Financial requirements to operate the TLD
  • Business and Marketing Plan for use of the TLD
  • Proposed benefits and support of TLD for the global internet public interest.

Applicants are also required to submit two financial projections: one demonstrating the most likely scenario of registration volume, fees and costs during the start-up period and first three years of operation, and the second showing the “worst case scenario” for costs and projections. Continue Reading .Anything 101: A Brief Guide to the New gTLD Program

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 and Geri Haight

UDRP proceedings are often touted as a quick and inexpensive way to resolve domain name disputes.  Several recent UDRP decisions denying relief to trademark owners, however, demonstrate that in some instances the UDRP may not be the appropriate tool.

A few recent UDRP decisions have denied relief to trademark owners who were seeking to reclaim trademark-based domain names that were being used (essentially) as fan sites.  For example, in October 2011, a panel denied a UDRP complaint filed by LEGO seeking the transfer of the domain name <legoworkshop.com>.   On the issue of legitimate use, the respondent claimed, and the panelist accepted, that he registered the domain name in order to show some of his son’s LEGO creations and to provide videos demonstrating building techniques.   Although LEGO provided evidence showing that the website located at the domain name had, at one point, displayed sponsored links for “Lego toys,” “Lego guns” and “Star Wars Legos,” the panelist determined that there was insufficient evidence of commercial gain to the respondent since it was unclear where the links went or with whom they were associated.  Thus, the panelist denied LEGO’s complaint (This loss is particularly notable as, according to an article in Domain Name Wire, LEGO has filed nearly 300 UDRP complaints and this decision is its first loss). Similarly, in September 2011, Stefani Germanotta (a.k.a. Lady Gaga) filed an unsuccessful UDRP complaint against the registrant of an unofficial fan website located at the domain name <ladygaga.org>.  Again, the panel examined whether the respondent was profiting from use of the domain name.  Finding that the website located at <ladygaga.org> lacked commercial content, the panel denied the complaint.

Continue Reading Use the UDRP to Reclaim That Trademarked Domain Name? Maybe Not.

Written by Geri L. Haight and Joseph M. DiCioccio

Are you concerned that the name of your business or the trademark used in connection with your best-selling product will be used in connection with an adult entertainment website given the soon-to-be launched .XXX domain names? Domain names ending with the generic top level domain (gTLD) .XXX will become available to the general public in December 2011. The time for trademark owners to act to prevent their marks from being used in connection with a .xxx domain name is now.

Act Now: Opt Out

Owners of registered trademarks may “opt out” of having those trademarks sold as part of the .XXX domain name offering. This procedure, called the “Sunrise B Period,” began on September 7, 2011 and ends on October 28, 2011. It runs concurrently with the “Sunrise A Period,” which permits businesses in the adult entertainment industry to register .XXX domain names that correspond to domain names from other gTLDs (such as .com, .net, etc.) or to such businesses’ trademark registrations.

During the Sunrise B Period, owners of registered trademarks who are NOT in the adult entertainment business can block the relevant domain name corresponding to a particular trademark registration from being registered or used. Applications can be made through approved domain name registrars.  The result of a successful Sunrise B application is that the domain name incorporating the trademark will be unavailable for registration, and the domain name will resolve to a standard informational page. On November 8th, at the conclusion of the Sunrise A and B Periods, .XXX domain names that have not already been pre-registered by a member of the adult entertainment industry or blocked by a trademark owner during the Sunrise B Period will be made available to members of the adult entertainment industry on a first come, first served basis (the “Landrush” period). Thereafter, on December 6th, all remaining .XXX domain names will become available to the general public for registration (the “General Availability” period) in December 2011.

Who Is Able to Opt Out and What May Be Blocked?

Owners of a US trademark registration or a foreign equivalent may submit an application during the Sunrise B Period to remove a domain name comprised of the registered trademark from the .XXX domain name offering. Pending US trademark applications, US registrations on the supplemental register, common law or unregistered trademarks, and state trademark registrations do not meet the eligibility requirements for a Sunrise B application. Moreover, the registration forming the basis of the Sunrise B application must be valid as of September 1, 2011. You may only block a domain name that corresponds exactly with the trademark reflected in the registration.

What Happens if Several Parties Seek to Register and/or Block the Same .XXX Domain Name?

  • If several Sunrise B parties (non-adult entertainment businesses) request that a particular domain name be blocked, it will be blocked and no registration fees will be refunded.
  • If several Sunrise A parties (adult entertainment businesses) request the same domain name, an auction will be held to determine who receives the domain name. The domain name will be awarded to the highest bidder.
  • If a Sunrise A party and a Sunrise B party request the same domain name, it will be given to the Sunrise A party, however:
    • The Sunrise A party will be given an opportunity to withdraw its application in light of the Sunrise B application;
    • Each applicant will be given notice of the other’s claim to trademark rights; and
    • If multiple applications remain, the domain name proceeds to auction and will be awarded to the highest bidder.
  • Only domain names registered during the Landrush and General Availability periods are awarded on a first come, first served basis. Sunrise applications are not awarded on this basis.

Can You Apply to Block Registration of Typos of Your Trademark During the Sunrise B Phase?

No. Sunrise B applications can only correspond exactly to the trademark as it appears in the trademark registration. Registration of domain names that are comprised of typographical errors of your trademark or that include generic of descriptive words in addition to your trademark may be registered once .XXX domain names become available to the general public during the General Availability period on December 6, 2011.  Some registrars, like GoDaddy, are allowing pre-registration of such typosquatted .xxx domain names.

It is important that trademark owners consider taking advantage of the Sunrise B Period. Failure to file a Sunrise B application may result in the trademark being registered as a domain name by a third party and used in connection with an adult entertainment website. Moreover, it is typically more expensive to reclaim domain names incorporating trademarks that have been registered by unauthorized third parties (e.g., through a Uniform Domain Name Resolution Policy proceeding or through a negotiated settlement) and it is to file a Sunrise B application.

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.