Cybersquatting & Domain Dispute Attorneys / Lawyers

New gTLD Domain Name Suspended by URS

With the offering of new generic top-level domains (gTLD), consumers, domainers and companies can find, purchase and create domain sites that better represent who they are to the right of the dot.  However, this can also create problems for those with already established trademarks and domain names.  

For example, it was recently decided by the Uniform Rapid Suspension System (URS) that a gTLD domain name be suspended because the Complainant met, by clear and convincing evidence, all three elements of the URS requirements:

Your Domain and the TLD Expansion

With the addition of new top level domains, such as .discount and .cheap, being offered, it is highly recommended to brand owners that they take additional registration steps with ICANN to protect their trademarked domains.  ICANN has recently formed the Trademark Clearinghouse (TMCH), which is a global, centralized database of domain names.  The TMCH has been created so that brand owners can submit their trademark information to validate their rights to a particular mark and help protect such trademark holders during the expansion. 

The TMCH provides what is known as the “Sunrise” service period to those that have registered with the TMCH, allowing trademark holders to have priority access to requested domain names associated with their trademarks before the general public is given access to the same.

Another service the TMCH provides is the Trademark Claims Service.  This requires Registries to check new domain registrations against the TMCH database.  Any registrations that match a registered domain with the TMCH, the Registry must notify the party attempting to register the domain name, and then the trademark holder if such party goes forward with that registration.  This allows trademark holders to take immediate action towards any new domain registrations if it is infringing on their protected rights. 

However, registration with the TMCH comes with a price.  Base registration fees start at $150 per year for registration; $435 for a three-year registration; and $725 for a 5 year registration.  Therefore, if a trademark owner has more than one or several marks to register, that owner should carefully plan which trademarks are to be registered and which ones should not be registered with the TMCH.

Looking for additional information that better explains the Trademark Clearinghouse and its services, or get assistance in determining which trademarks to register with the TMCH, contact one of our experienced attorneys. 

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.

Cybersquatting, Trademark and Domain Name Dispute Attorneys: Protecting Domain Assets.

Attorneys specializing in cybersquatting, trademark and domain monetization matters.

Managing Partner Enrico Schaefer: "Traverse Legal's attorneys represents domainers like you in portfolio protection matters, trademark infringement threat letters and litigation.    We know cybersquatting and trademark law and pride ourselves on advanced litigation techniques which are both cost-effective and budget oriented.  We also handle a large volume of complex litigation under both the Lanham Act, UDRP and the Anti-Cybersquatting Protection Act.  Because we are a boutique litigation law firm, we know how to strategically and efficiently accomplish our client's goals."

If you are dealing with a domain name dispute based on trademark rights or wish us to analyze your domain portfolio for trademark issues, you may contact one of our domain attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

 

Domain name disputes are becoming more common all the time. Some cybersquatting and trademark infringement allegations against domain owners are legitimate.  Some are not. If you have received a cybersquatting threat letter demanding that you turn over your domain name to a third party or been named as a Respondent in an ACPA or UDRP/ICANN proceeding, you need the help of an experienced domain dispute attorney.  High value domain names and domain name porfolios need to be protected.  We can help protect your valuable domain assets.

Registerfly Update From ICANN

The ICANN Blog has reported the following information concerning the Registerfly problems.

Q. If ICANN terminated Registerfly's accreditation agreement on 31 March, why do they still claim to be accredited?

A. Registerfly decided to file an arbitration action to stall the termination. For better or worse, this is their right under the accreditation agreement. The accreditation agreement is a contract that ICANN has to follow. If we didn't follow the agreement, Registerfly could potentially continue operations as an accredited registrar indefinitely. So please be patient and understand that we are doing everything we legally can to protect registrants without jeopardizing our right to terminate Registerfly' accreditation.

Q. What will happen when Registerfly's accreditation is finally terminated?

A. There are a number of paths we could pursue, and to some extent, the one we follow will depend on the behavior of Registerfly. In the 'big picture' the process looks like this: (1) Registerfly loses its access to the registries; (2) a competent and qualified accredited registrar is selected by ICANN to receive a 'bulk transfer' of names (and underlying data) from Registerfly to it; (3) former Registerfly customers will be able to contact the new registrar to manage or transfer their names.

Q. How does the bulk transfer work?

A. ICANN has the power to approve a bulk transfer from one registrar to another. We will not do so unless the transfer is in the community interest. We have told Kevin Medina he should name a "gaining registrar" now and stop hurting his customers, but he has not done so. If Kevin does name a gaining registrar, we will only approve the transfer if it is in the community interest.

In a bulk transfer, there is no fee to the customer. However, a bulk transfer is different from a normal transfer in that it does not add a year to the registration.

Q. Why doesn't ICANN bulk transfer the names now?

A. Like it or not, Registerfly is still technically accredited, pending the outcome of our lawsuit against them or their arbitration action. Because Registerfly is accredited, we cannot initiate a bulk transfer. When Registerfly's termination is final, we will bulk transfer the names, either to a registrar suggested by Kevin Medina or one chosen by ICANN.

Q. What is the status of names that were deleted by Registerfly that are currently in RGP (redemption grace period) or PendingDelete?

A. The registries have agreed not to "drop" names that are deleted by Registerfly. In other words, the names will not be permanently deleted. Today, Registerfly could technically allow its customers to redeem names in RGP, but given its history of not being able to fund the registries, it doesn't seem like that's going to happen. (There has to be money in Registerfly's registry accounts in order to process transactions.)

Since Registerfly has failed in its obligations to its customers, we are continuing our discussions with the registries and others to ensure that customers will be able to regain control of their domain names. Unfortunately, unless Registerfly begins funding its registry accounts in earnest, we may not be able to make that happen until their accreditation agreement is finally terminated.

Q. What if my name was deleted before the registries began prohibiting deletions by Registerfly?

A. If the name is available for registration, by all means, register it.

If the name was registered by someone else, you have at least four options:

1. Work out an agreement with the current registrant.

2. Wait and see if the current registrant lets it expire.

3. File a lawsuit in court against the current registrant.

4. For cases involving "abusive registrations" (this is a narrow category, so you should proceed with caution), begin an administrative proceeding under the Uniform Domain-Name Dispute-Resolution Policy. For more details on this option, see Uniform Domain-Name Dispute-Resolution Policy Here.

If you decide to file a complaint under the UDRP, you'll need to do so via one of ICANN's four approved domain-name dispute-resolution service providers:

• Asian Domain Name Dispute Resolution Centre [ADNDRC]
• The National Arbitration Forum [NAF]
• World Intellectual Property Organization [WIPO]

(Please note that the answer above applies only to domain names in .com, .net, .org, or other generic Top Level Domains operated under contract with ICANN such as .biz, .info or .name. Dispute resolution policies vary in other TLDs such as .gov, .edu, or .us and the 240+ other country code Top Level Domains. Please note also that ICANN generally recommends seeking legal advice before deciding which of the above alternatives is best in any particular situation.)

Is ICANN Liable for Failing to Rescind Registerfly's Accreditation?

There is a lot of commentary among registrants and watchers that ICANN is also responsible for the losses being incurred by those victimized by Registerfly.  The issue of whether class action litigation can be brought against Registerfly, eNom and/or ICANN is also being hotly debated. 

Traverse Legal attorneys are analyzing these issues on behalf of its clients.  These issues are complicated and this web site is not meant to provide legal advise or create an attorney-client relationship.  If you have a claim against Registerfly, you should contact and retain an attorney so that your specific situation can be analyzed.

ICANN Responsibility: ICANN is responsible for accreditation of registrars.  Registerfly reports on its web site that it is an ICANN accredited registrar, although it appears that for part of its existence, it resold domain registrations through another accredited registrar, eNom.

The Registrar Accreditation Agreement between ICANN and Registerfly provides as follows:
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5.3 Termination of Agreement by ICANN. This Agreement may be terminated before its expiration by ICANN in any of the following circumstances:        

5.3.1 There was a material misrepresentation, material inaccuracy, or materially misleading statement in Registrar's  application for accreditation or any material accompanying the application.  

5.3.2 Registrar:

5.3.2.1 is convicted by a court of competent jurisdiction of a felony or other serious offense related to financial  activities, or is judged by a court of competent jurisdiction to have committed fraud or breach of fiduciary duty, or is the subject  of a judicial determination that ICANN reasonably deems as the substantive  equivalent of those offenses; or

5.3.2.2 is disciplined by the government  of its domicile for conduct involving dishonesty or misuse of funds of others.  

5.3.3 Any officer or director of Registrar is convicted of a felony or of a misdemeanor related to financial activities, or is judged by a court to have committed fraud or breach of fiduciary duty, or is the subject of a judicial determination that ICANN deems  as the substantive equivalent of any of these; provided, such officer or director is not removed in such circumstances.

5.3.4 Registrar fails to cure any breach of this Agreement (other than a failure to comply with a policy adopted by  ICANN during the term of this Agreement as to which Registrar is seeking,  or still has time to seek, review under Subsection 4.3.2 of whether  a consensus is present) within fifteen working days after ICANN gives Registrar notice of the breach.

5.3.5 Registrar fails to comply with a ruling  granting specific performance under Subsections 5.1 and 5.6.

5.3.6 Registrar continues acting in a manner  that ICANN has reasonably determined endangers the stability or operational integrity of the Internet after receiving three days notice of that determination.

5.3.7 Registrar becomes bankrupt or insolvent.

This Agreement may be terminated in circumstances described in Subsections  5.3.1 - 5.3.6 above only upon fifteen days written notice to Registrar  (in the case of Subsection 5.3.4 occurring after Registrar's failure to cure), with Registrar being given an opportunity during that time to initiate arbitration under Subsection 5.6 to determine the appropriateness of termination under this Agreement. In the event Registrar initiates litigation or arbitration concerning the appropriateness of termination         by ICANN, the termination shall be stayed an additional thirty days to allow Registrar to obtain a stay of termination under Subsection 5.6 below. If Registrar acts in a manner that ICANN reasonably determines endangers the stability or operational integrity of the Internet and upon notice does not immediately cure, ICANN may suspend this Agreement for five working days pending ICANN's application for more extended specific performance or injunctive relief under Subsection 5.6. This           Agreement may be terminated immediately upon notice to Registrar in circumstance described in Subsection 5.3.7 above.

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5.10 No Third-Party Beneficiaries. This Agreement shall not be construed to create any obligation by either ICANN or Registrar to any non-party to this Agreement, including any Registered Name Holder. 

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THE FULL Registrar Accreditation Agreement  CAN BE FOUND HERE.

What does this mean?  It means that ICANN took potentially took responsibility for monitoring whether Registerfly was meeting its accreditation requirements.  However, there is a provision in this particular agreement which limits ICANN's liability to consumers for its own failures to ensure compliance.  It has already been reported that the ICANN has known for a long time that Registerfly was not complying with its accreditation requirements.  While the accreditation obligations imposed on ICANN  create potential liability for ICANN, the third-party liability disclaimer may limit the ability of registrants to include ICANN in a complaint for relief or damages. Of course, if liability can be imposed outside the contract terms (for instance negligence), then it may be possible to get around 5.10.

If you’ve been bitten by the RegisterFly bug, there is a gripe site which has become the source of information about longstanding registerfly problems found at Registerflies.com

RegisterFly Update By ICANN

If you are a victim of the Registerfly meltdown and your domain names are currently at risk, you should contact one of our domain name lawyers by emailing us here. Or you can retain Traverse Legal now by clicking here.  We can assist you in obtaining control of your domain names.

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If you’ve been bitten by the RegisterFly bug, there is a gripe site which has become the source of information about longstanding registerfly problems found at Registerflies.com

 

ICANN provides the following update:

• As is already known on 21 February 2007, ICANN issued a letter to RegisterFly [PDF, 101K] indicating a Notice of Breach of its Registrar Accreditation Agreement (RAA) and demanding that RegisterFly act within 15 working days to cure the breaches outlined in the letter.

• Also on 21 February, ICANN sent a Notice of Audit [PDF, 60K] that required RegisterFly to allow ICANN to inspect and copy records as well as a notice to submit data to ICANN or a reputable escrow agent regarding registration applications and Registered name holders.

• On 27 February 2007, ICANN sent two employees to RegisterFly offices in New Jersey to audit them and obtain the registrant information.

• RegisterFly has not complied. On 1 March 2007 RegisterFly's lawyers forwarded a letter [PDF, 12K] to ICANN advising that refusal to comply with ICANN's request "should not be construed as my client's unwillingness to cooperate with ICANN but as evidence of their continuing efforts to service their customers."

• In response ICANN has issued a second letter [PDF, 288K] dated 2 March 2007 setting out additional breaches of the Registrar Agreement. In that letter ICANN describes RegisterFly's statement that refusal to comply is evidence of customer service as "preposterous."

• RegisterFly's continuing breaches of the RAA are serious and will be pursued.

• ICANN's primary concern is to do what it can to protect registrant and related data.

• ICANN has provided notice that it will file a suit against RegisterFly in the United States District Court for the Central District of California seeking a temporary restraining order (TRO) requiring RegisterFly to turn over the data requested and to compel an emergency audit of its books and records.

• In addition to this legal action, ICANN today convened a telephone conference among those needed to implement a plan that will help cease unintended deletions. The participants were registries holding RegisterFly names: Afilias (.info), NeuStar (.biz), VeriSign (.com, .net), RegisterFly backend services provider Tucows and eNom (for which RegisterFly was a reseller) as well as representatives of RegisterFly.

• The Registries involved have agreed to move any RegisterFly names in Redemption Grace Period* status into Server-Delete-Prohibited status. This will prevent them from being deleted from the registry and becoming available for re-registration by others. ICANN commends and encourages this example of cooperation to protect registrant data.

ICANN will provide further updates as new information is available and action taken.

Media Contacts:

Paul Levins
  Executive Officer and Vice President
  Corporate Affairs
  ICANN  
  Ph: +1 310 301 5804
  E:  [email protected]

International
  Andrew Robertson, Edelman ( London)
  Ph: +44 7921 588 770
  E: [email protected]

* (Registration Grace Period is a period that allows the domain-name registrant, registrar, or registry operator time to detect and correct any mistaken deletions. During the grace period, the deleted name will be placed on REGISTRY-HOLD, which will prevent the name from functioning/resolving. This tends to call attention to the impending deletion).

If you are a victim of the Registerfly meltdown and your domain names are currently at risk, you should contact one of our domain name lawyers by emailing us here. Or you can retain Traverse Legal now by clicking here.  We can assist you in obtaining control of your domain names.

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RegisterFly Meltdown

If you are a victim of the Registerfly meltdown and your domain names are currently at risk, you should contact one of our domain name lawyers by emailing us here. Or you can retain Traverse Legal now by clicking here.  We can assist you in obtaining control of your domain names. 

[Form Registerflies.com]:  By now you may have received the formal notice to owners of domains which have been registered by eNom via its reseller, RegisterFly.com. Although you purchased your name at RegisterFly, eNom is the actual registrar of record for your domains.

As an eNom reseller, RegisterFly was contractually bound to adhere to certain standards of customer service in a speedy and diligent manner. Effective March 9th, RegisterFly will be terminated as an eNom reseller.

The Domain Tools Blog has reported this update from ICANN:

ICANN has posted a public update on the RegisterFly situation we reported about earlier and it doesn’t look good. On February 21st, 2007, ICANN issued a letter to RegisterFly [PDF, 101K] indicating a Notice of Breach of its Registrar Accreditation Agreement (RAA) and demanding that RegisterFly act within 15 working days to cure the breaches outlined in the letter. Also on February 21st, ICANN sent a Notice of Audit [PDF, 60K] that required RegisterFly to allow ICANN to inspect and copy its records. In addition they were given notice to submit data to ICANN or a reputable escrow agent regarding registration applications and Registered name holders. Five days later on February 27th, 2007, ICANN sent two employees to RegisterFly’s offices in New Jersey to audit them and obtain the registrant information. RegisterFly did not compile and refused to give ICANN the Information. Two days later on March 1st, 2007 RegisterFly’s lawyers forwarded a not be construed as my client’s unwillingness to cooperate with ICANN but as evidence of their continuing efforts to service their customers.” In response ICANN has issued a second letter [PDF, 288K] dated March 2nd, 2007 setting out additional breaches of the Registrar Agreement and in that letter ICANN describes RegisterFly’s refusal to comply which was based on their “continuing efforts to service their customers” as “preposterous“. 

Here is a copy of the February 21, 2007 Download ICANN's notice of breach letter putting Registerfly's accreditation at risk. If Registerfly loses accreditation, it will no longer be able to sell or resell domain name registrations.

If you’ve been bitten by the RegisterFly bug, there is a gripe site which has become the source of information about longstanding registerfly problems found at Registerflies.com

For those domain registrants with sufficient money at stake because of the number of domains they have registered or the value of their domains, there are legal remedies available.  Initially, a lawsuit against Registerfly for emergency declaratory and injunctive relief is critical.  A court order must be obtained immediately precluding the domain from being transferred to a new owner.   If the domain is lost to an innocent third party, recovery of the domain may still be possible. Contact a domain name attorney if you have any further questions.

ICANN Accredited RegisterFly Implodes

If you are a victim of the Registerfly meltdown and your domain names are currently at risk, you should contact one of our domain name lawyers by emailing us here. Or you can retain Traverse Legal now by clicking here.  We can assist you in obtaining control of your domain names.

Internet consumers are in an uproar over what appears to be an ICANN accredited registrar named RegisterFly which is heading for self-destruction.  The domain tools blog has posted about the serious problems facing RegisterFly here. 

There is concern from people who have used “private” registration may not be able to retrieve their domain names if RegisterFly goes down.  Typically, you must show identification such as driver’s license with your photo in order to retrieve your domain name as a registrant if, for instances, you lose your password.  If something should happen to RegisterFly, the fact that your registration is private won’t allow you to easily prove that you are the domain owner.  On Monday, RegisterFly’s website went dark for most of the day as CEO, Kevin Medina, changed the root password and locked everyone out.  Vice President, John Naruscewicz, had been feuding and there is already been litigation between the two. 

ICANN states it does not have any power to manage the situation, except to pull the accreditation of RegisterFly completely.  ICANN has reported that 70% of the complaints they have received in the last two weeks concerned RegisterFly.  If RegisterFly loses its accreditation, they will lose their customers and ICANN is expected to make an announcement about this later in the week.

Here are some more links to information concerning the RegisterFly debacle:

If you’ve been bitten by the RegisterFly bug, there is a gripe site which has become the source of information about longstanding registerfly problems found at Registerflies.com

• Brawling RegisterFly partners in fight to the death, Malaysia Sun, February 24, 2007.

• RegisterFly faces losing ICANN accreditation. See it here.

• ICANN may act against RegisterFly; Slashdot, February 23, 2007.

• RegisterFly.com in big trouble, read about it here.

If you are a victim of the Registerfly meltdown and your domain names are currently at risk, you should contact one of our domain name lawyers by emailing us here. Or you can retain Traverse Legal now by clicking here.  We can assist you in obtaining control of your domain names.