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That's my Trademark, but why is it in your Domain Name? Is the UDRP for me?

You have a business, you want to take advantage of the opportunity to reach out and communicate with your customers, attract potential new customers and perhaps provide the ability to increase your revenue through e-commerce by providing user-friendly transactions online. So, you purchase a domain name in your company name, create a website and it becomes an international success – VERY profitable.  Your business thrives for 10 years with the addition of your website.  Then one day you receive a report informing you that someone else has registered your domain name in the .net extension.  They have placed a monetized link page on that domain.  You are livid. You have worked so hard to establish your business and reputation and someone, with very little effort, has registered a domain name for $5.99 and reap all the benefits of someone mistakenly typing a “.net” into their browser and clicking on a random link that will provide the registrant with the money that you should be getting.  Or worse, in an attempt to get the domain back you attempt to reach out to the registrant in hopes that they will transfer it to you once they see the error in their ways and they respond by saying they know how valuable the name is and that they will transfer it to you for $200,000 since you are a billion dollar company and can afford it.  So what do you do? Do you sue, let it go and hope that not much traffic goes to that domain or dispute the domain through the Uniform Domain Name Resolution Policy (UDRP). Regardless of your approach there is one thing that is certain, this is totally unfair!

This hypothetical story is actually a very real dilemma that brand owners face on a daily basis.  It is not uncommon for a client to approach us on almost a weekly basis with a domain issue and guidance on how to remedy it.  Unfortunately, the law is not always fair and tends to base their decision on precedents and rights.

There are different avenues one can take to dispute a domain name if it is felt that your trademark rights have been violated.  You can opt to use specific country laws like the Anti-Cybersquatting Consumer Protection Act.  Unfortunately registrars (who many believe should be just as liable as the registrant) are not usually a part of these cases.  There are also trademark and unfair competition laws that one can turn to, but both parties have to be under the same jurisdiction.  The aforementioned options involve going to court which means spending a lot of money on legal fees and other resources on a process that can be dragged out for months or years especially if there are appeals.  If none of these choices appeal to you, there is the option of utilizing the UDRP process under ICANN.  So to UDRP or not to UDRP, that is the question…

The UDRP is an arbitration-like process that all owners or registrants of gTLDs (.com, .biz, .net, .info etc.) are subject to.  For many brand owners it has been their next course of action after a letter to the registrant was undeliverable or ignored and has been proven to be a more cost effective way to deal with these issues.  Many brand owners are resorting to the UDRP process through an ICANN approved provider, The World Intellectual Property Organization (WIPO) to settle their domain disputes.  According to an article on Domain Name Wire, in 2009 almost 90% of the cases were found to be in favour of the complainant.  This was also echoed by a colleague, who specializes in UDRP cases, when I attended a meeting at the International Trademark Association (INTA) conference in Boston this year.  The newly established electronic filing system and the speed at which the administrative panel renders their decision are the reason that she and many other IP attorneys choose WIPO as their dispute provider. 

The National Arbitration Forum (NAF), with headquarters in Minneapolis, MN, is another ICANN approved provider.  There is a wealth of information on both the WIPO and NAF websites so please check them out for more details to determine which provider is right for you.  For those of you concerned with ccTLDs and resolving those domain disputes, WIPO does have a domain name dispute resolution service for some ccTLDs.   There is also a comparative study on ccTLDs and gTLDs which is a great resource on the different domain dispute resolution processes around the world.

Besides the cheaper cost and speed of the proceedings, the process is more “informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant are located,” according to WIPO. 

So let’s say you decided to file a complaint under the UDRP.  The cost and timely nature of the proceedings appeal to you, but what does it take to win a case?  Firstly you will have to prove that the domain is identical or confusingly similar to a trademark where the complainant has rights.  Secondly, the registrant cannot have any rights or legitimate interests.  Lastly and almost most importantly, the domain name was registered and used in “bad faith”.  Despite the majority of cases being found in favour of the complainant, the administrative panel does not look too kindly on complainants who file a UDRP just because they are not happy that someone has used a name similar to theirs.  The complainant must ensure, before they file, that their evidence satisfies the requirements outlined in the policy.  The complainants that have been found to abuse the system will not only have their request denied, but also run the risk of being called out by the panel and have the decision made available for all to see on the internet.  The displeasure of one panellist was demonstrated in a recent case involving Credit Europe Bank who failed to prove that they had rights over the registrant.  A recent article in Domain Name Wire reported that the lawyer for Credit Europe Bank openly stated that “his client’s interests are more important than the domain owner’s, so they should get the domain name.”  Not only did these words not prove his case but also, according to WIPO panellist Richard Lyon, this lawyer who was probably paid a lot of money failed to understand the UDRP process.  Not surprisingly, this did not fair well for Credit Europe Bank or their lawyer.  Many speakers at the INTA conference forewarned us that, one negative ruling in UDRP proceedings can hurt your reputation and follow you if there are plans for future filings.  In fact, the information on Credit Europe Bank was the topic of many Tweets which is how I came to know this case.  I even received the decision in my WIPO domain name decision email alerts.

Lyon also accused Credit Europe Bank of Reverse Domain Name Hijacking, a term reserved for a complaint that was filed in bad faith.  According to ICANN’s UDRP rules, Reverse Domain Name Hijacking is found when a complainant is found to use the UDRP process in an “attempt to deprive a registered domain name holder of a domain name” which “constitutes an abuse of the administrative proceedings.”  Just as quick as you can file a UDRP, the tables can turn.

So, to UDRP or not to UDRP?  There are many factors to consider, but in my opinion, if the domain name has false or hidden registration information and after consultation with your legal team, marketing team and those with a vested interested in that trademark on the value of that domain to your business or if there is a risk of confusion to your customers or potential customers and you have strong evidence to show that the name was registered by the registrant in bad faith, I say proceed.  It is the faster and cheaper way to dispute a domain name and many brand owners/complainants have found this an appropriate way to remedy the situation.

BrandProtect goes to Boston for INTA

Boston is the place for INTA’s 132^nd Annual Meeting.  From May 22^nd – 26^th, the Boston Convention and Exhibition Centre (BCEC) found right in the heart of Boston will house various committee meetings, academic sessions and networking opportunities.

 

Founded in 1878, the International Trademark Association (INTA) is a non-profit membership organization that is composed of 5900 trademark owners, professionals and scholars that come from over 190 countries.  The goal of INTA is not only the advancement of trademarks and intellectual property (IP) but to encourage fair and effective commerce worldwide. 

 

Rosemary and I have the privilege to attend this year’s meeting and are quite excited about it.  This will be my fourth INTA Annual meeting and every year that I attend I come back with valuable up to date knowledge that is helpful to both me and the clients we serve.  Not to mention, the giveaways at the booths are fantastic, but I digress…

 

I am enrolled in various academic sessions and table topics, but the three sessions that I am most eager to learn from will be 1) an Internet Law update on domain names, Ad Words and auction sites moderated by the provocative J. Scott Evans, 2) protecting your domain name with the impending launch of the new gTLDS and 3) a table topic on Uniform Dispute Resolution Policy (UDRP) proceedings.  INTA is a time to learn best practices for trademark rights protection on a global scale.  I am surrounded by some of the most esteemed minds in the business which helps me to discover effective strategies to deal with IP and trademark issues that I deal with on a daily basis.

 

The INTA 132^nd Annual Meeting is not only for the trademark professional but also for brand owners who want to keep themselves educated and up to date with issues in the world of IP and trademarks.  I encourage anyone who has a vested interest in trademarks to become a member and attend the annual meeting.

New Volunteer Term Kicks off at INTA!

2010 will be an exciting year for me because as the new decade kicks off so does another volunteer term on the INTA bulletin committee. Thousands of INTA members spend countless hours volunteering their time and talents contributing to INTA, but I think working on the Bulletin must be one of the most rewarding and instantly gratifying ways to be involved in the Association. Close to 30,000 INTA members receive the Bulletin every two weeks, with each issue being much anticipated as receiving the publication was voted the most important benefit of INTA membership – even over the annual meeting!

 

Over the past two years my role on the committee has afforded me the privilege of reporting on cutting edge trademark conferences as well conducting Member Spotlight interviews with the most respected trademark attorneys in the world. If I had to pick one highlight of my last term it would be covering the Trademark Law and the Internet forum held last year in San Francisco.  The conference featured one of the founders of the Internet, Google Evangelist Dr. Vint Cerf, as a keynote speaker. To be in the same room with him and hear him speak about topics such as Interplanetary Internet and the introduction of IPv6 was a truly phenomenal experience. I enjoyed writing the article and sharing information gleaned from the conference with clients and colleagues alike. When doing a Member Spotlight interview the one question I ask each person without fail is “What do you see as the most serious issue today concerning trademark infractions on the Internet?” The responses I get back vary from person to person, and I (and my clients here at BrandProtect) benefit from their responses. I always learn something new and often get a different perspective on the issues that are important to all of us in the brand protection field.

 

Though we are still in the early days of 2010, the members of the INTA Bulletin committee are hard at work preparing stories for upcoming issues.  Please look out for my Member Spotlight focusing on Nancy Lutz appearing next month.Nancy is an IP attorney and a partner of Kelley Drye & Warren LLP, in Washington D.C. I’m currently working on articles focusing on J. Scott Evans, Senior Legal Director, Global Brand and Trademarks - Yahoo! Inc. (who is heavily involved with ICANN, advocating the protection of rights holders interests with the introduction of the new gTLDs) and Vincent Martell, Intellectual Property Manager at CKX (American Idol, Elvis Presley Enterprises, Muhammad Ali, the Beckhams). I always appreciate feedback, so after reading my articles please drop me a line and let me know your thoughts!

Globalized domains – will we see more tricks from Phishers and Spammers?

Marshall McLuhan's 1962 prediction of the "global village" is manifested today in the form of the internet, a self-governing community without borders involving the integration of different cultures.  Worldwide communication is instantaneous and the internet is becoming more global and accessible. Did you know that the first official domain name in non-Latin characters will appear in 2010?  The Bulgarian government is one of the first to register internet domains in Cyrillic. It will be interesting to see the impact this will have on the internet.

Recently, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a fast-track process for implementing non-Latin domain names by early to mid 2010. As Latin characters dominated the internet, a switch to non-Latin characters will allow people from all over the world to register domains in Arabic, Mandarin, Japanese and Russian to name a few. With this new implementation it may become problematic in controlling spammers and phishers. Peter Wood, member of ISACA's Conference Committee and founder of First Base Technologies states, "While we understand the interest in expanding the characters offered in other languages, we are concerned that an increase in web site characters could lead to greater security risks and consumer fraud," As, most modern scripts have a similarity to Cyrillic scripts, many experts predict an increase in spoof URL's that confuse users into distinguishing a fraudulent site from an authentic one. For example, here is a list of characters in Cyrillic that look like Latin characters: y, k, e, x, b, a, p, o, c and g. Characters that look alike are known as homographs. The scope for homograph attacks widens, as IDN's allow for the use of full Unicode character set. One could see the implications of this as it's possible to create domains like "bank" using the lower case Cyrillic ‘a'.

There is a defense mechanism for this; Firefox has an add-on which "Puts a little flag in the status bar that tells you whether you are visiting a Traditional Domain Name (green TDN) or an International Domain Name (UN-blue IDN with translation to Punycode)". It is also important to educate yourself about various phishing attacks and to never click on suspicious links in an email. When in doubt, it would be good to get into the habit of typing URL's directly into browsers.

The borderless world of the internet provides many opportunities for companies to create a global online presence.  The introduction of IDN's increases the potential for more online business, since it allows companies to effectively target larger audiences and widen their scope on the internet.  Protecting brands and reputation online has never been more important than it is today, in the ever evolving world of the internet.   

ICANN needs more time for new gTLDs

Have you formulated your brand strategy to ensure that you do not miss your opportunity to leverage this new offering or protect your brand and trademarks from unauthorized and malicious uses?  Well, not to worry, neither is ICANN.   Those who are concerned about the new gTLDs have been watching and waiting for ICANN to give notice as to when they will begin accepting applications for the new gTLDs.A few months ago, we were told that they will begin to accept newapplications in Q1 of 2010 and now it looks as though this will not happen until the second half of 2010.  ICANN’s CEO Rod Beckstrom has said that the new gTLDs will be available when, “we’ve adequately addressed the important issues that are on the table.”  In other words, this is still a work in progress. 

The third version of the Draft Application Guidebook was released in early October and is available for public comment until November 22.  There are still the issues of trademark protection mechanisms and stability and security of the Internet infrastructure that need to be further researched and developed.  In a recent article published by Managing IP they have pointed out that one of the topics of great debate, the Globally Protected Marks List, has been squashed.  This was a very popular idea that was welcomed by the trademark community; however they have received a lot of criticism from those outside the trademark community.  What has been made very clear is that ICANN cannot make everyone happy, which is why the whole idea of the new gTLDs has had so much set back.  So will the new gTLDs really happen? I will say, most likely, it is really just a matter of when.  ICANN is continuing its quest to find a “happy medium”, if that is possible.  They have also announced that they have received twelve responses for Expressions of Interest (EOI) for independent evaluators in the new gTLD program.  These evaluators will examine ICANN’s operational readiness for the launch of the new gTLDs. 

Although the launch of the new gTLDs do not appear to be happening any time soon, brand owners must also not forget about ICANN’s plan to deploy Internationalized Domain Names (IDNs). They will introduce a limited number of internationalized ccTLDs.  In case you are wondering what this is all about, this is where a user can obtain a domain with a string of characters in their native language.  ICANN has released their proposed final implementation plan regarding the IDN ccTLDs and have a launch date for this “Fast Track Process” on November 16^th, 2009.   If as a brand owner you have not heard of this, please take note of this as new issues can arise by the launch of these new ccTLDs.   Educate yourself, understand what the registration procedures will entail and ensure that if there is a Sunrise period proposed for these ccTLDs that you are able to take full advantage and not get left in the dark.