Cybersquatting & Domain Dispute Lawyer Attorney Law Firm

The Cost of Protecting Your Brand and Domains

The new generic top level domains (gTLDs) are opening up countless opportunities for new domains and websites.  However, these domains may come at a higher price.  As the new gTLDs become available, registrars are paying thousands to millions of dollars for the highly desired domain name extensions and may need to charge a more costly registration price for these top level domains.  

 

For example, Vox Populi Registry, Ltd. is planning to offer .SUCKS at the suggested retail price of $2,499 per year for each Sunrise premium domain name registration, which are for those trademarks registered in the Trademark Clearinghouse.  So, if a company wants to protect their brand, they may have to consider paying this price of $2,499 in order to register .sucks in their own name to prevent the domain from being registered and inappropriately used by others.   However, there are less expensive options that will be available after the Sunrise Period is over and if the domain is still available.  Some of these options include a domain block for $199 per year or registering it as a regular domain name for the price of $249 per year.   Unfortunately for many brand owners, the release of new gTLD extensions like .SUCKS may require them to reassess their portfolios to determine whether defensive registrations are a necessary investment that cannot be avoided, and instead of taking the chance to wait until after the Sunrise Period for other low cost options.

 

Regardless, it is imperative that companies take the time to re-evaluate their brand strategies to ensure that their valuable intellectual property rights are properly protected with these new gTLDs now becoming available.  If you are unsure of what steps to take or need assistance in further protecting your brands, consult with one of our experienced domain name attorneys.

 

 

The Next Generation of the Internet

Welcome to Domain Name Law Radio. Domain names are valuable assets.  Domain disputes, domain theft, cybersquatting, and domain monetization are important issues.  Our domain lawyers have answers to your domain name questions.  

Matt: Hello and welcome back to Domain Law Radio.  This is Matt Plessner and do you ever wonder what is in store for the future generation of the internet?  Jennifer Wolfe, Managing Director of Wolfe Domain and Co-author of the book, “Domain Names Rewired” has some good ideas on this.  We are, of course, pleased to have her with us today via Skype.  Jennifer, thanks a lot for being with us today.

Jennifer:  Thanks for having me.  It is a pleasure.  

The Next Generation Of The Internet

Matt: Well, it is a pleasure to have you here, like I said.  Now Jennifer could you start off by just kind of telling us a little bit about what you do and what your website is about? 

Jennifer:  Sure.  So what I do is I consult with companies, largely right now very big brands, but also some smaller and emerging companies in understanding how the internet is about to change and how they should be developing their strategy. 

UDRP Involving Web Developer Dispute

The National Arbitration Forum recently issued a decision on June 24th, 2013 that involved what we have seen to be a fairly regular factual dispute. In particular, the complainant had retained a web developer to create its website. When the complainant failed to pay the web developer, the web developer changed the website available at the domain name. In particular, the web developer made the webpage resolve to content that stated that the website was paused for non-payment of an overdue invoice, and that invoice amount was for $1500. Interestingly, the complainant had transferred the domain name to the web developer as part of the project. As is not uncommon, the complainant simply did not know that it should not retain registration of the domain name for reasons like this. The UDRP (Uniform Domain-Name Dispute-Resolution Policy) panelist determined that the respondent's request for the domain name and use to display that there was an overdue payment, amounted to a bad faith registration and bad faith use, as is required under the UDRP. Therefore, the UDRP panelists decided in favor of the complainant and ordered transfer of the domain name, namely AlaskaHealthFair.org. 

This decision may come as a surprise to some, in light of the fact that it is a fact pattern that is not necessarily limited to traditional cybersquatting. Instead, it involves contractual issues, namely the breach of contract to pay a web developer. However, this UDRP decision may be used as precedent in the future to resolve domain name disputes that involve factual scenarios similar to this. Nevertheless, a domain name attorney will be in the best position to analyze particular facts and determine whether or not the UDRP is the best course of action.

New gTLD Application Thoughts: The difference maker will be Google

The new gTLD applications are in and those of us in the Internet log, domain name space have been thinking about the new gTLD process for years. ICANN has talked about the new gTLD process for years, and finally we have a list of applicants for new gTLD's top-level domains. Of course, we were all really surprised to learn about a month ago that the number of applications was well beyond what most people thought. It was unclear who was going to be applying for new domain name extensions and how well adopted things might be received in the Internet community. There has been certainly a lot of commentary in the domainer space against new gTLDs because, of course, a lot of domainers own a lot of high value .com domains, and any new TLDs that compete with the .com world are a potential  threat to the domain name portfolios held by many people. 

The Auction for New gTLD Applications

If you go through the list, there is a large number of applications which are going to end up in the gTLD auction process where these TLD applicants are going to have to bid against each other potentially if they can't negotiate between themselves a resolution about who gets to offer the gTLD and under which application, under which business model.

How to Oppose a New gTLD Application

ICANN has greatly expanded the number of top level domains that are going to be available as registries for people to potentially register domains on. And they have just issued their list of new gTLD registry applications that have been submitted. So, there are a large number of TLDs that have now been put into play. For instance, American Automobile Association has registered for .AAA, dot triple A. AARP has filed for a registry application for .AARP, and there is any number of TLDs that are now in play to become registries. Once those registries are set up, the registries will craft their own rules for who can register domain on that gTLD. 

Welcome to Domain Name Law Radio. Domain names are valuable assets.  Domain disputes, domain theft, cybersquatting, and domain monetization are important issues.  Our domain lawyers have answers to your domain name questions. 

As many of you already know, ICANN has greatly expanded the number of top level domains that are going to be available as registries for people to potentially register domains on. And they have just issued their list of new gTLD registry applications that have been submitted. So, there are a large number of TLDs that have now been put into play. For instance, American Automobile Association has registered for .AAA, dot triple A. AARP has filed for a registry application for .AARP, and there is any number of TLDs that are now in play to become registries. Once those registries are set up, the registries will craft their own rules for who can register domain on that gTLD.

New gTLD Trademark Clearinghouse - How To Protect Your Trademarks.

Traverse Legal’s trademark attorneys are authorized agents who can file your trademarks with the Trademark Clearinghouse.  Feel free to contact one of our authorized trademark agents for more information.

The Trademark Clearinghouse concept is an important part of the new gTLD roll-out. The trademark clearinghouse will be available for new gTLD registries to support pre-launch Sunrise or Trademark Claims Services. Each new gTLD though wil have some leelway regarding trademark infringement claims and dispute resolution. Your trademark portection lawyers can help you craft a strategy to make sure you  take advantage of the approximately 3 months for rights holders to begin recording trademark data in the Clearinghouse before any new gTLDs begin accepting registrations (estimated in January 2013).

TRADEMARK CLEARINGHOUSE

11 JANUARY 2012

1. PURPOSE OF CLEARINGHOUSE

1.1 The Trademark Clearinghouse is a central repository for information to be
authenticated, stored, and disseminated, pertaining to the rights of trademark holders.
ICANN will enter into an arms-length contract with service provider or providers,
awarding the right to serve as a Trademark Clearinghouse Service Provider, i.e., to
accept, authenticate, validate and facilitate the transmission of information related to
certain trademarks.

ICANN Addresses Registration Abuse

In February of 2009 a Registration Abuse Policies Working Group (RAPWG) was chartered by ICANN’s Generic Names Supporting Organization Council (GNSO), to present findings and concrete recommendations in addressing domain name registration abuse in generic Top Level Domains (gTLDs). Upon chartering the RAPWG, the GNOS Council committed not to commit to a decision on whether or not to initiate a Policy Development Process (PDP).

However, the terms of GNSO Council’s commitment not to commit was fulfilled! The RAPWG has at long last, and after a public comment period where the RAPWG received comments/criticisms on its Initial Report, released its Final Report on May 29th.

ICANN Releases its Fourth Draft of the DAG

The Internet Corporation for Assigned Names and Numbers (ICANN), published its fourth version of the Draft Applicant Guidebook (DAG) on May 31, 2010. ICANN uses the DAG for informing and instructing the public about registering generic Top Level Domains (gTLDs).

This newest draft would require all registries of new gTLDs to honor marks validated by the proposed Trademark Clearinghouse. The Trademark Clearinghouse will include all nationally and multi-nationally registered marks including, “from countries where there is no substantive review”.

Cybersquatting Trademark Protected .me Domains: A Lesson for New gTLDs which ICANN Has Failed to Learn.

As can be seen by a WIPO & NAF serach using DomainFight.net, cybersquatting .me domains was a popular pastime in 2008 including trademark protected domains owned by Porsche, Exxon Mobil, Blue Cross and Blue Shield, America Online,     Mozilla Corporation and The Coca-Cola Company.  This does not include the threat letters sent out by trademark holders, which in many instaces cause a behind the scenes and unreported transfer of domains. 

As noted over at The Domains blog "Toyota.Me Sell for 90K: Why Shouldn’t a Registry Be Liable for Profiting From the Sale of Trademark Infringing Domains?" Each time a new domain extension is introduced, it simply creates a brand new platform for domain name cybersquatting. It is even worse when the Registry offering the domains thorough auction or otherwise end up reaping the initial financial rewards of obvious trademark infringement.  Where is the accountability?  Why hasn't ICANN done anythign to make registries and registrars more accountable for trademark issues?

In their comments to ICANN concerning the new domain extensions, The Domains blog makes an important point.  If the number of domain extensions,  gTLD’s, is greatly expanded, how will trademark holders, celbrities, famous people and others protect themselves from bad faith cybersquatting? See Open Letter To ICANN: Our Take On the New Domain Extensions

Cybersquatting Attorneys: Recent Cybersquatting Cases and Issues across the World Wide Web

Traverse Legal’s lawyers constantly monitor the latest information on the World Wide Web concerning cybersquatting cases and issues. Here is this week's round-up:

Chineese Domain Scam
By admin
As authorized anti-cybersquatting organization we hereby suspect the alleged Meiao Co.,Ltd to be a domain grabber. Hence we need you confirmation for two things, First of all, whether this alleged Meiao Co.,Ltd is your business partner ...

typosquatting
By renamecor
Is it still classed as cybersquatting if you are actually sending them the visitors via an affiliate link / code ? Basically doing what they should have already done (ie bought the typo url). Now I understand that most affiliate ...

Domain Names and Trademarks - Legal Issues
Search Engine Roundtable - USA
Both enacted in 1999 to deal with cybersquatting. UDRP is like biding arbitration. Less formal. No hearing. ACPA on the other hand is more involved, ...

Cybersquatting and Domain Name Dispute Attorneys: Recent Cybersquatting and Domain Name Issues across the World Wide Web

Traverse Legal’s lawyers constantly monitor the latest information on the World Wide Web concerning cybersquatting and domain name issues.  Here is this week’s cybersquatting and domain name dispute round-up:

iTunes 'cybersquatting' row threatens Nominet authority
Silicon.com - UK
By Jo Best The authority of the UK's domain name registrar has been called into question after the owner of the domain name iTunes.co.uk investigated what ...

What's a domain name worth?
Financial Post - Toronto,Ontario,Canada
"[True cybersquatting is] if you take a name that is confusingly close to the name of a business to mislead or confuse," said Byron Holland, president of ...

New Owners of DNHour.com Plan to Continue and Develop This Pligg Site
WebWire (press release) - Atlanta,GA,USA
As a domain name dispute, cybersquatting and trademark lawyer that had visited the DNHour.com site many times previous to this purchase, Mr. Schaefer did ...

Changing WHOIS Privacy Protection In Domain Name Dispute Can Be Considered Registration In Bad Faith

An interesting domain dispute has recently come down from WIPO involving a new interpretation of WHOIS privacy protection services and their relation to the “registration in bad faith” UDRP element.  The case, BMEzine.com, LLC v. Gregory Wicks, concerned the domain name bme.com.  This decision has interesting and widespread ramifications for domainers who arbitrarily change their WHOIS information.

Cybersquatting the Obama-Biden Ticket: Domain investors still don't understand the UDRP and ACPA

CNN Political Ticker: All politics, all the time - Blogs from CNN.com

The Obama campaign has succeeded partly through astute, unprecedented use of the Internet. But some of the most obvious Web site domain names for the Obama-Biden ticket might not actually belong to the campaign anytime soon — if ever.

After hearing about Obama's selection for his number-two slot, anyone who tried to surf to obamabiden.org was re-directed to an eBay page selling that domain name for a starting bid of $100,000.

As of 6:30 p.m. ET, there were no bids listed.

The same seller lists 15 similar domain names up for sale, including obama-biden.com, obama-biden.org, and obamabiden-08.com.

Technorati Tags: obama, biden, cybersquatting

WIPO Domain Dispute Decisions under the Cybersquatting Provisions of the UDRP for the week ending June 6, 2008.

The following Uniform Dispute Resolution Policy (UDRP) decisions were entered by the World Intellectual Property Organization (WIPO). There are 31 panel decisions, and of those decisions, 26 domains were transferred after finding of cybersquatting and 5 UDRP complaints were denied.