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05/02/2013

CAN A TOP LEVEL DOMAIN (GTLD) BE TRADEMARKED?

With all the new GTLDs being rolled out by the Internet Corporation for Assigned Names and Numbers (ICANN), the question of whether a GTLD can be trademarked has become the big issue. The answer is relatively straightforward. A GTLD cannot in and of itself be trademarked. But if the GTLD is in fact an indicator of source and origin (i.e., .google, .deloit, .aarp, .censure, .ford, .amazon, etc.) then the GTLD can be trademark protected.

Currently, there are a number of legal rights and objections that have been filed on a variety of GTLD applications claiming that the applied-for GTLD infringes an existing right of a trademark owner. Many of the objections, however, deal with clearly generic and/or descriptive dictionary words. Those GTLD legal right objections will, no doubt, fail because they seek protection of the GTLD itself which is purely descriptive of some vertical (i.e., .golf, .analytics, .apartments, .architect, .art, etc.).  While a variety of trademarks have been filed by a variety of applicants for otherwise descriptive/generic GTLDs, those applicants have typically had to disclaim exclusive rights in the word or have filed design class word marks knowing they can't achieve trademark rights in the word itself.

Below is an example of a refusal by the USPTO examining attorney analyzing the issue and providing the analysis which virtually precludes dictionary words from achieving exclusive trademark rights as a GTLD registry:

SECTION 2(E)(1) – MERE DESCRIPTIVENESS REFUSAL

Registration is refused because the applied-for mark merely describes the field of applicant’s services.
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

Top-level domains or TLDs often describe the subject matter or user of the domain space. In re the Dot communs. Network LLC, 2011 TTAB LEXIS 366 (Trademark Trial & App. Bd. Nov. 22, 2011). When the applied-for top-level domain engenders the commercial impression of a top-level domain and the top-level domain operator registers domain names, consumers would anticipate that the top-level domain identifies the registration of domains in the field identified in the mark. Id. Moreover, the TTAB has held that top-level domains are descriptive for other services where the applied-for mark directly conveys to relevant consumers that the services are related to the field specified in the mark. Id. Specifically, consumers would expect ancillary goods and services to be rendered by the operator of top-level domain registry in the same field as the domain name registration services. Id.

Here, applicant’s mark, combines the term DOT, meaning “the character that separates the different parts of the domain name” with [dictionary word], meaning “services that enables real estate brokers to establish contractual offers of compensation (among brokers), facilitates cooperation with other broker participants, accumulates and disseminates information to enable appraisals, and is a facility for the orderly correlation and dissemination of listing information to better serve broker's clients, customers and the public” for services featuring and related to top-level domain names in the field of real estate listings. See Attachment 1 – Microsoft Internet & Networking Dictionary definition of DOT;  see also Attachment 2 – Dictionary.com definition of [dictionary word] and Wikipedia listing for multiple listing service.

Purchasers would perceive the applied for mark as a TLD because it is structured in the manner of a top-level domain. That is, purchasers are accustomed to the combination of a decimal point followed immediately by a term or phrase as a top-level domain. See, i.e., Attachment 3 – examples of top level domains that would lead purchasers to the conclusion that the applied-for mark is a top level domain. When used in connection with top-level domain name registration consulting, purchasers will not understand the mark as denoting applicant as the source of the services, but as conveying salient  information about the services.

Ultimately, when purchasers encounter applicant’s services using the mark DOT[dictionary word], they will immediately understand the mark as an indication that applicant’s consultation services relate to the registration of top-level domains in the field of real estate and not an indication that applicant is the source of the services. Therefore, the mark is merely descriptive of the field of applicant’s services and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

04/17/2013

Traverse Legal, PLC Successfully Defends UDRP Filed by Non-Profit: No Established Trademark Rights in Phrase "Organizing for Action"

Attorney Brian A. Hall has successfully defended a UDRP filed against its client concerning the domain names organizingforaction.com and organizingforaction.org.  The UDRP Decision to deny the claim matches another earlier, although recent, decision that reached the same result concerning the domain name organizingforaction.net.  While the two UDRPs were separate, involving separate Respondents, separate facts and allegations, and separate representation, the decisions to deny the Complainant's Complaint were both based upon Complainant's failure to establish trademark rights in the phrase "Organizing for Action."  Complainant is a non-profit organization associated with the Democratic Party and supported by President Obama.  Complainant currently operates from President Obama's primary website, barackobama.com, There has already been significant press concerning the background related to the Complainant and these domain name disputes.  See herehere, and here.

Continue reading Traverse Legal, PLC Successfully Defends UDRP Filed by Non-Profit: No Established Trademark Rights in Phrase "Organizing for Action" >>
03/31/2010

UDRP Attorney Tips | How To Respond To An UDRP Complaint?

Do you know what to do if you feel your trademark rights are being violated by another party? What if you get a notice that someone else thinks you are infringing on their trademark rights and intellectual property online? UDRP Attorney Brian Hall discusses the ins and outs of UDRP complaints with Damien Allen on today's program.

  • The UDRP (Uniform Domain Name Dispute-Resolution Policy) is process that was established by ICANN or Internet Corporation for Assigned Names and Numbers, for the resolution of disputes regarding the registration and/or use of internet domain names.
  • UDRP, is a process that allows somebody who believes they have trademark rights to go out and enforce those trademark rights as it relates to domain names.
  • UDRP is not a lawsuit, it’s not filed in a court of law, and no monetary damages are available under the UDRP.
  • Filing a UDRP does not preclude the complainant from filing a lawsuit for monetary damages or some other type of relief, injunctive or otherwise.

Announcer:  Welcome to Domain Name Law Radio brought to you by Traverse Domain Name Law, internet lawyers specializing in complex litigation and domain law issues such as Domain Disputes, Cybersquatting, Domain Monetization, UDRP and Anticybersquatting Consumer Protection Act cases worldwide.  Now here’s your host, Damien Allen.

Damien Allen: Good morning and welcome to Domain Name Law Radio.  My name is Damien Allen.  Today we’re discussing how to respond to a UDRP complaint with Brian A. Hall of Traverse Legal, PLC.  Good morning and welcome to the program, Brian.

Continue reading UDRP Attorney Tips | How To Respond To An UDRP Complaint? >>
08/11/2008

Reverse Domain Name Hijacking Decision Under the UDRP: What Was The Attorney Thinking?

A recent reverse domain hijacking decision in Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM is interesting to any lawyer who practices domain dispute law. The law firm bringing the Complaint Lowenstein Sandler PC advertises as a large law firm specializing in domain name disputes as evidenced by a search of their web site for the words "domain name." Considering that the domain name was registered 5 years before Complainant's trademark application was even filed and 3 years before claimed first use of the trademark, and that it contains two generic words, it is hard to imagine whether the lawyers were thinking beyond the billable hour when they filed this one. 

WIPO Domain Name Decision: D2008-0641

In addition, the Complainant’s case was weak in other respects. The Complainant provided no strong evidence of its trademark rights. The Complainant has no registered trademark. The Complainant provided evidence of having only a pending application for a registered mark. Neither did the Complainant provide strong evidence of having common law, or unregistered, trademark rights. The Complainant’s evidence in this respect comprised of three pages from its own website, and a small number of articles with incidental references to it, or containing (among others) short quotes of the “CEO of ad network Collective Media”. Those articles were dated between January and March 2008. The evidence from its own website appears to have been obtained in April 2008. The Complainant provided no evidence to support its claim of having unregistered trademark rights in 2005, let alone in 2002 when the disputed domain name was registered.

The Panel therefore finds that the Complainant should have appreciated that its Complaint could not succeed and, as such, was brought in bad faith for the purpose of paragraph 15(e) of the Rules.

Congratulations to Ari Goldberger who represented the Respondent.
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Cybersquatting: 'How To' Resources

  • Anticybersquatting Consumer Protection Act - Wikipedia
    The Anticybersquatting Consumer Protection Act (also known as Truth in Domain Names Act), a United States federal law enacted in 1999, is part of A bill to amend the provisions of title 17, United States Code, and the Communications Act of 1934, relating to copyright licensing and carriage of broadcast signals by satellite (S. 1948). It makes people who register domain names that are either trademarks or individual's names with the sole intent of selling the rights of the domain name to the trademark holder or individual for a profit liable to civil action.
  • Typosquatting - Wikipedia
    Typosquatting, also called URL hijacking, is a form of cybersquatting which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser. Should a user accidentally enter an incorrect website address, they may be led to an alternative website owned by a cybersquatter.
  • Reverse Domain Hijacking - Wikipedia
    The term reverse domain hijacking refers to the practice of inequitably unseating domain name registrants by accusing them of violating weak or non-existent trademarks related to the domain name.
  • Uniform DomainName DisputeResolution Policy - Wikipedia
    The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP policy currently applies to all .biz, .com, .info, .name, .net, and .org top-level domains, and some country code top-level domains.
  • Cybersquatting - Wikipedia
    Cybersquatting, according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else.

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