Cybersquatting & Domain Dispute Attorneys / Lawyers

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.

Uniform Domain Name Dispute Resolution Policy: UDRP WIPO vs. NAF Arbitration. Which Should I Choose?

A UDRP complaint seeking arbitration to transfer a domain name which you believe is infringing your trademark mark to you and to obtain control of that domain name. A common question we often have is whether or not there is a difference between the various arbitration authorities who can hear your UDRP dispute.

Top 10 Domain Name Stories of January 2011

Despite suffering from Domainer Flu, the .com gTLD of which is now owned by TuCows' YummyNames (thanks Bill Sweetman), we bring you the top 10 cybersquatting/domain name stores of January 2011:

1. Court allows Microsoft's Claims for Contributory Cybersquatting. The Western District of Washington confirmed this month that contributory cybersquatting does, in fact, exist. Microsoft asserted the contributory cybersquatting claim against Digispace Solutions and yMultimedia and alleged that those companies induced third parties to register domain names that contained or consisted of typosquats of Microsoft's trademarks.

2. John Zuccarini loses in court... again. Zuccarini filed a lawsuit against eNom, NameJet, Verisign, and Network Solutions after a court-appointed receiver failed to renew several domain domain names that were formerlly owned by Zuccarini, which included govermentgrants.com, usgoverment.com, and britian.com. These, and several other domain names, were awared to Office Depot after it sued Zuccarini, which in turn assigned them to DS Holdings to sell. As Domain Name Wire reports, the court noted, “Zuccarini has already wasted quite enough of the parties’ and this Court’s time and resources in responding to his frivolous claims."

3. VeriSign announces 4th Quarter Loss, Profits Up. VeriSign announced a 4th quarter loss of $40.5 million, due in part to a $109 million interest payment related to a special dividend. Despite this loss, domain sale and SSL certificate revenue was up 13% to $178.8 million.

4. Demand Media has successful IPO, opens at over $23 a share. Domain industry giant Demand Media's IPO was a successful event. Shares were up 40% before opening at over $23 a share, and the share price remained relatively consistent throughout January. Demand Media owns a large portfolio of domains, domain name registrar eNom, parking company HotKeys, and a part of NameJet. Domain Name Wire has some insight into how this may change the industry and lead to the acquisition of other registrars.

5. Google strikes back at content farms, may allow blocking of domain names. Potentially in response to Demand Media's IPO, Google has been rumored to be working on a new feature set that will allow end-users to block domain names from search results. This feature would be tailored towards the blocking of spam and content farms, such as Demand Media's eHow. For more on Google's algorithm change, read Matt Cutts' blog.

6. Oversee.net Acquires ShopWiki. Oversee.net has acquired ShopWiki, a network of shopping comparison websites. Oversee.net is the parent company of DomainSponsor, SnapNames, and Moniker. Domain Name Wire reports that ShopWiki.com receives over three million unique visitors per month.

7. New York Times buys dealbook.com from Frank Schilling, after it lost a UDRP proceeding for the name. Media giant New York Times has purchased dealbook.com from notable domainer Frank Schilling for an undisclosed price. Frank's Name Administration company won the UDRP on a laches defense--a defense that is very rarely recognized under the UDRP.

8. GoDaddy (and others) begin to heavily market the .co ccTLD. GoDaddy has begun to heavily market the .co ccTLD through an advertizing bliz that included a Super Bowl commercial. Other comanies, such as Overstock.com, have followed suit. Overstock.com has rebranded as O.Co, a domain that cost the company $350,000.

9. NameDrive receives undisclosed investment amount and reorganizes. Domain Name Wire reports that domain parking company NameDrive has received an undisclosed investment from BIP Invesment Partners S.A., which also holds investments in Key-Systems, EuroDNS, and Domain Invest. NameDrive says that it has sold over $10 million in domains through its NDX market since 2008. 

10. Over 200 sickened at DomainFest 2011. Media outlets are now reporting that over 200 individuals have been struck by an unknown sickness following their attendance at DomainFest 2011 and the subsequent afterparty sponsored by DomainSponsor, which was held at the Playboy Mansion. The cause is yet to be determined, but some have speculated that it may be Pontiac Fever, a respiratory infection caused by the same Legionalla bacteria responsible for Legionnaires disease. We hope that this incident will not overshadow the otherwise best DomainFest yet, and we hope to see all of our friends and collegues again at DomainFest 2012.

Eric Goldman Interview: Domain Name Exceptionalism - Is Special Treatment Warranted (Part 2)

Eric Goldman is an Associate Professor of Law at Santa Clara University School of Law. He also directs the school's High Tech Law Institute. Before joining the SCU faculty in 2006, he was an Assistant Professor at Marquette University Law School, General Counsel of Epinions.com, and an Internet transactional attorney at Cooley Godward LLP. Eric teaches Cyberlaw and Intellectual Property and previously has taught courses in Copyrights, Contracts, Software Licensing and Professional Responsibility.   Eric's research focuses on Internet law, intellectual property, marketing, and the legal and social implications of new communication technologies. Recent papers have addressed topics such as search engines and online marketing practices.

Eric runs two popular blogs Tech & Marketing Blog & Goldman's Observations Blog. Part 1 of Eric Golman's interview can be found here.

ANNOUNCER: Today’s program is brought to you by Traverse Legal. A law firm specializing in internet law, domain disputes, intellectual property and technology company representation. That’s Traverse Legal www.traverselegal.com. Welcome to the Vertio Talk Radio tech spotlight with your host Damien Allen. 

Professor Eric Goldman on Domain Name Exceptionalism - Is Special Treatment Warranted? (Part 1)

Eric Goldman is an Associate Professor of Law at Santa Clara University School of Law. He also directs the school's High Tech Law Institute. Before joining the SCU faculty in 2006, he was an Assistant Professor at Marquette University Law School, General Counsel of Epinions.com, and an Internet transactional attorney at Cooley Godward LLP. Eric teaches Cyberlaw and Intellectual Property and previously has taught courses in Copyrights, Contracts, Software Licensing and Professional Responsibility.   Eric's research focuses on Internet law, intellectual property, marketing, and the legal and social implications of new communication technologies. Recent papers have addressed topics such as search engines and online marketing practices.

Eric runs two popular blogs Tech & Marketing Blog & Goldman's Observations Blog. 

Domain Name Disputes Handled By WIPO Continue To Rise

DN Journal just noted that WIPO disputes have continued to increase over the past five years, linking to an article at pingdom.com.  Pingdom notes that domain disputes have doubled since 2003 and that the United States is the origin of most of the domain name disputes handled by WIPO.  Forty percent of the defendants are U.S.-based, despite the fact that the U.S. only has 15% of the world’s internet population.  Here is the chart posted on Pingdom.

S. 2661 is a Fox in Sheep’s Clothing? Why Call it an Anti-Phishing Bill When It Is Also A Trademark Bill?

Chuck Kisselburg at the ICANNblog makes a good point about he so-called Anti-Phishing Bill, Senate Bill 2661. While the bill is not close to becoming a law at this juncture, Chuck correctly notes that "the bill feels like a fox in sheep’s clothing as the bill’s name suggests a bill against anti-phishing. Instead the bill not only discusses anti-phishing but seems to be based around the use, or misuse of domain names."

More Cybersquatted Domain Names for Your Buck With One UDRP Complaint

Rule 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy states, “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”  This means that if a trademark owner’s business is being harmed by multiple unrelated cybersquatters, she must file one complaint against each registrant.  What if you have a popular trademark and/or domain name (which usually coincides with a popular product or service) that you believe is being cybersquatted by numerous domain name registrants?  Based upon the number of UDRP Complaints that name only one domain, most Complainants, and even their attorneys, believe you have to file one Complaint against each domain name registrant.

Win or Lose: The UDRP Is Not Your Only Option When It Comes to Domain Names

While the UDRP is an efficient and relatively cost-effective mechanism by which a trademark owner can acquire a domain from a cybersquatter, it is not the only option.  This is especially true since the proofs needed to win a UDRP are not the same as those required to win an ACPA federal lawsuit, although similar.  If your UDRP Complaint requesting that the domain name be transferred is denied, you can still pursue an ACPA lawsuit for cybersquatting, as long as you do so within the applicable statute of limitations.   

Should you be on the receiving end of a UDRP Complaint and lose, you have rights that may be worth pursuing.  However, you do need to know that if you lose, you must file a lawsuit in a court of law to stay, or prevent, the domain name from being transferred to the Complainant that prevailed under the UDRP.

The UDRP is a form of adjudication, but as the below excerpt from a known case makes clear, it is no court of law. 

Bounty Hunters to Track Down Cybersquatters?

Rick Schwartz has been warning other domainers for some time about the dangers that lurk ahead.  One lawyer at Out-law.com is proposing that trademark holders band together to track down and police cybersquatters worldwide.  This effort would be funded by large global corporations. 

John Mackenzie, an intellectual property and technology law expert at Pinsent Masons, the law firm behind OUT-LAW.COM, said that businesses should band together to tackle the multi-million dollar cybersquatting industry pro-actively.

"What is really needed and what may occur is a trade organization pushing a policing function whose only purpose is to chase these people," said Mackenzie, saying that it could be similar to business-funded copyright protection groups such as the Business Software Alliance.

"Brands have no choice," he said. "This is turning from the opportunistic registration of domains with people making small amounts of money in garden shed operations into activity from highly sophisticated organizations who are operating around the world."

Essentially, what is being proposed here is a common fund to bring cybersquatters into court in order to sue for damages, as opposed to the limited relief of domain transfer allowed under the UDRP and similar policies.