The first question which Matt pulled up, we’ve got a number of people asking about, is on this the subjective of how trademarks are going to be handled. There’s actually something as described in the white paper that all of you, in existence, received in advance called the Trademark Clearinghouse that’s run by ICANN. So we’ve been asked to talk a little bit more about the Trademark Clearinghouse and what is the trademark protection process? How will this actually play out? How do I know if somebody is trying to assert a string that I consider my own? Who’s got it?
Archive for the ‘Cybersquatting Law’ Category
When companies and individuals take the time and money to register and develop a domain name or trademark, they want to make sure that their intellectual property is being used only by them. However, there are several other individuals and companies that will try to benefit from the hard work of others by intentionally, and sometimes unknowingly, use the same or similar domain names or trademarks for their own personal and financial gain. ‘Bad Faith’ is defined by Wikipedia as ‘double mindedness or double heartedness in duplicity, fraud, or deception. It may involve intentional deceit of others, or self-deception.’
The summary of cases below briefly outline how the Courts were able to find that the bad faith requirement had been met under the ACPA when individuals and companies did intend to profit from other’s domain names and trademarks in registration and/or use. Some of these bad faith intentions used by the infringers included: the use of the domain name in conjunction of a “phishing’ scam; no other reason for use of the words or makes other than a desire to capitalize on a strong trademark; intent to profit from poor typing abilities of consumers trying to reach owner’s websites; and a competitor registering the domain name for the express purpose of keeping another corporation from using it, just to name a few.
What is “bad Faith” intent to profit under the Anticybersquatting Consumers Protection Act?
Below are synopses of many Bad Faith Cybersquatting cases that cut in favor of the plaintiff.
Although the plaintiffs in Pennsylvania Business Bank v. Biz Bank Corp., failed in their assertion that defendant’s had an affirmative duty to at least investigate third party trademarks before registering the domain, the requisite bad faith element was still met and found in favor of the plaintiffs: “plaintiff has proven . . . that BIZBANK is a distinctive or famous mark so that it is entitled to protection; that defendants’ domain name <http://www.bizbank.com> is identical or confusingly similar to plaintiff’s mark; and that defendants registered the domain name with the bad faith intent to profit from it.” 330 F. Supp. 2d at 526.
Donuts, Inc. has now released many new gTLDs of the several hundred for which they have applied, and cybersquatters around the globe have wasted no time in snatching up domains related to well-known consumer brands. Some worry that with the new gTLDs come new opportunites for cybersquatters to extort trademark owners.
Although Donuts offers a Domain Protected Marks List (DPML) which allows trademark owners to block the use of their names across all domains administered by Donuts, they also offer a cheaper alternative through their Uniform Rapid Suspension System (URSS). For a small fee, trademark owners can file a complaint to potentially remove a cybersquatter from their name within 24 hours.
Even with these methods to combat cybersquatting, it can still be very costly to remove potential squatters. Removal costs can add up very quickly when considering the number of brands a potential trademark owner may have multiplied by the number of domains being squatted upon for each brand.
Contact one of our experienced trademark and domain name attorneys to quickly and efficiently resolve any trademark infringement issues you may have.
Donuts, Inc. previously launched several new generic top-level domain names (gTLDs) starting in November of 2013, with more coming between May through July of 2014. Along with providing many gTLDs, Donuts has also launched its Domains Protected Marks List (DPML) to protect trademarked domains against cybersquatting. The service provided under the DPML allows trademark holders, for a low cost, to protect their marks by blocking trademark-related terms from being registered at the second level, or the characters before the dot, from infringing registrations.
The process is rather straight forward:
- One must register their trademarked domains with ICANN’s Trademark Clearinghouse.
- Next, brand owners must submit exact match mark or term to the DPML.
- Once the mark or term is verified, those are blocked in Donuts gTLDs, which means a domain name that has those marks or terms are not functional or not able to be used for a website URL, email address or any other domain name-related purposes.
- Finally, certain restrictions do apply for premium names, three-character names or other specific types of applications of service.
This protection service provides another level of defense for trademarked domains against cybersquatting at the front end at a cost-effective alternative to filing a lawsuit for trademark infringement or domain name disputes. For more information or assistance with the DPML, contact one of our experienced trademark and domain name attorneys and lawyers.
Stolen domain names and domain theft are all to common. Sometimes, the person who seals a domain name has access to the registrants account with the register. Their former employee, partner, or website developer. Now that they control the registrants account, they essentially control the domain name.
What our cybersquatting law attorneys typically see is a falling out between parties. Once a dispute arises, the person who controls the domain names starts using that as leverage for some other purpose. Domain name theft can take a variety of different forms. But the end result is the same. Your website is held hostage by someone who does not own the trade mark or the domain name itself.
There are a variety of different techniques our domain name attorneys use in order to get a domain name returned. The domain name theft needs to be dealt with quickly and directly. If you have trademark rights in the words which comprise the domain name, you have leverage. If you have a trademark registration for your trademark, you get even more leverage. The first thing that you need to do though is make sure that you address all the various options for securing your domain name before launching the first strike. Contact one of our domain name lawyers for more information.
Final Rights Protection Mechanism (RPM) Requirements For New gTLD (Generic Top Level Domain) RegistriesSunday, December 1st, 2013
On October 1, 2013, ICANN (Internet Corporation for Assigned Names and Numbers) published its final Rights Protection Mechanism (RPM) Requirements for the new gTLD (Generic Top Level Domain) registries. This allows people who hold trademarks to be protected during the Domain Name System expansion.
Trademark protections were developed as the new gTLD program begins, they include trademark claims as well as the sunrise services, which are required for all new gTLD’s. The RPM requirements enumerated in the final publishing are mainly concern the implementation of the new gTLD registries. This list of final requirements reflects the feedback given by various stakeholders during the ICANN conference in Beijing in April of 2013.
Here are some highlights of the final Rights Protection Mechanism Requirements:
- - There are several protections given to those participating in the “Sunrise Period”. This benefit is for trademark holders who meet the requirements given by ICANN who are given the opportunity to register domain names prior to the opening of General Registration .
- - There are several requirements detailing the notice of registration periods to ICANN.
- - There are protections for the time and duration of the Sunrise Period.
- - There are regulations concerning Sunrise Period eligibility.
- - Registration mechanisms are explicated as well as protections surrounding them.
- - There are several Sunrise Period technical specifications concerning its implementation.
For more information concerning the requirements issued by ICANN, please click here: http://www.thedomains.com/2013/10/01/icann-publishes-the-final-rights-protection-mechanism-rpm-requirements-for-new-gtld-registries/
Chances are you have heard te acronym gTLD if you work in almost any industry related to the internet. gTLD stands for “Generic Top Level Domain” and refers to the new generic terms that will be replacing .com, .net, and so on. So, instead of Nike.com you could be typing in Nike.shoes or shoes.nike, in its most basic definition, a top level domain is the last section of a web address. So that means .com is also considered a top level domain. But .com has been around for decades, and it is old news. We’re talking about the thousands of new top level domains that will start to appear at the end of this year. That’s right, we’re moving from a dot com world to a dot anything world in the next couple months. Top level domains can be generic terms like .books or .ski as well as branded words like .microsoft or .google. Soon you will start to see these new gTLDs in use for all sorts of different reasons. Lets say you own a store called My Store, would you use mystore.com or simply my.store? Now that .com web addresses have nearly been used up, these new gTLDs will be a cheaper and more industry specific way to get your website up and running. Questions you may have about the gTLDs such as how much a gTLD costs as well as what a gTLD is used for will be answered in the video series above.
More and more people are familiar with traditional cybersquatting, which is the registration used for trafficking in the domain name corresponding to the trademark of another with a bad faith intent to profit from that trademark of another. However, cybersquatting also entails registration and use of personal names and as domain name. Although 15 USC 11 25 D, which is the anti cybersquatting consumer protection act statue, it is one that more trademark attorneys and domain attorneys are familiar with, there’s a separate statue dealing directly with cyber piracy protections for individuals. Namely, 15 USC 81 31 provides civil liability for any person who registers a domain name that consists with a name of another living person, or names substantially confusing or similar to that living person, without that persons consent, with a specific intent to profit from that name by selling the domain name financial gain to that person or any third party.
A large number of UDRP complaints are never responded to by the respondent. As a UDRP attorney specializing in both complaints and responses to Uniform Domain-Name Dispute-Resolution Policy arbitration proceedings, I see it all the time. Some respondents don’t participate because they don’t want to spend the money on a UDRP lawyer to go through the process of filing a response. These clients think it’s too complicated to respond to the UDRP themselves. Other people simply don’t want to take the time to do the paperwork themselves. After all, they may have only spent $30 or $40 on domain registration fees. Continue reading UDRP Attorney Update: Should you flee or fight a UDRP complaint? »
Traverse Legal offers a cybersquatting report that enables us to identify using various what other domains might be out there that correspond to your trademark. Now, keep in mind, cybersquatting is when someone registers uses or traffics in a domain name that is confusingly similar to a trademark that you own with a bad faith intent to profit from it.