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 Jamison Arterton

In the latest Google AdWords decision, a U.S. Federal District Court judge in Texas refused to certify two classes of advertisers who filed separate infringement suits against Google Inc.  The complaints, filed in 2009, each claim that Google sold search terms that included registered trademarks to advertisers who were not affiliated with or sponsored by the trademark holder.  The purchaser’s advertisements were then displayed on the top or right side of the corresponding results page as “sponsored” advertising.  According to the complaints, the sale of such keywords to competitors infringes on the trademark owner’s rights, particularly since Google does not remove sponsored advertisements upon notice of trademark rights.  It only removes or disables such links if the advertisement itself contains another’s trademark.  The purported classes, led by FPX LLC and John Beck Amazing Profits LLC respectively, claim that they had met all the prerequisites for class certification under Fed.R.Civ.Pro. 23(a)(2).  FPX sought certification of a Texas-only class of owners of registered marks that were sold by the defendant as a keyword and/or an AdWord from May 11, 2005 to the present.  In contrast, John Beck sought class certification for a nationwide class of trademark holders.

U.S. District Court Judge T. John Ward adopted the magistrate judge’s recommendation in denying the class certification because the plaintiffs could not meet the commonality requirement given the individualized nature of each class member’s claims. The court reasoned that such claims also required a determination of the validity of each plaintiff’s mark, weighing against class certification.

 The purchase of keyword Internet advertising is a key component of marketing programs for businesses as Internet users frequently rely on search engines, such as Google, to find and purchase products.  It remains to be seen whether the United States will follow the European Union’s Court of Justice’s recent determination that the purchase of a keyword or AdWord that is identical to the trademark of another and is used to promote goods or services in competition with the trademark owner may constitute trademark infringement under certain circumstances.  However, last week’s decision is a blow to trademark holders seeking to enforce their trademark rights in a class action setting.  While search engines and their online advertising programs continue to create common problems for trademark holders, last week’s decision calls into doubt whether joint remedies are available to trademark holders for such violations.  For the time being, it looks like it is back to the Whac-A-Mole approach to trademark enforcement in the AdWords context.

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.