Showing posts with label UDRP. Show all posts
Showing posts with label UDRP. Show all posts
02 October 2015
17 March 2015
Intellectual Property, Trademarks, Domain Names, UDRP
Don’t Forget About Domain Names | Winthrop & Weinstine, P.A. - JDSupra:
Domain Names, Intangible Property, Trademarks, UDRP, Websites, Intellectual Property
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Domain Names, Intangible Property, Trademarks, UDRP, Websites, Intellectual Property
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09 March 2015
Snapchat Loses Snapchatcheck.com UDRP
UDRP Panel Tells Snapchat to Check Itself Regarding Snapchatcheck.com | Foley Hoag LLP - Trademark, Copyright & Unfair Competition - JDSupra:
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18 November 2014
Domain Names and the Secret Trans-Pacific Partnership Agreement (TPP)
The US government together with other governments, are by-passing ICANN and the ITU, and entering the realm of direct internet governance of Domain Names and the DNS, through the Trans-Pacific Partnership Agreement--essentially mandating a WHOIS and UDRP (cybersquatting remedies) for all ccTLDs--
Secret Trans-Pacific Partnership Agreement (TPP) - IP Chapter: "...WikiLeaks released the secret negotiated draft text for the entire TPP (Trans-Pacific Partnership) Intellectual Property Rights Chapter. The TPP is the largest-ever economic treaty, encompassing nations representing more than 40 per cent of the world’s GDP. The WikiLeaks release of the text comes ahead of the decisive TPP Chief Negotiators summit in Salt Lake City, Utah, on 19-24 November 2013. The chapter published by WikiLeaks is perhaps the most controversial chapter of the TPP due to its wide-ranging effects on medicines, publishers, internet services, civil liberties and biological patents. Significantly, the released text includes the negotiation positions and disagreements between all 12 prospective member states..."
DNS Policy Notes | Bloomberg BNA: "The text of the TPP's Intellectual Property Chapter calls for signatories to do just two things regarding domain names: (1) provide a cybersquatting remedy [UDRP] for ccTLDs along the lines of the Uniform Domain Name Dispute Resolution Policy and (2) provide a reliable and accurate database of domain name registrants [WHOIS] in the ccTLDs. All of the countries participating in the TPP -- except for Brunei (.bn) -- have what the TPP is looking for... Fast-forward to the May 2014 IP chapter draft. According to WikiLeaks, the cybersquatting provision appears to have been amended to each country's satisfaction:
Article QQ.C.12: {Domain Name Cybersquatting}
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Secret Trans-Pacific Partnership Agreement (TPP) - IP Chapter: "...WikiLeaks released the secret negotiated draft text for the entire TPP (Trans-Pacific Partnership) Intellectual Property Rights Chapter. The TPP is the largest-ever economic treaty, encompassing nations representing more than 40 per cent of the world’s GDP. The WikiLeaks release of the text comes ahead of the decisive TPP Chief Negotiators summit in Salt Lake City, Utah, on 19-24 November 2013. The chapter published by WikiLeaks is perhaps the most controversial chapter of the TPP due to its wide-ranging effects on medicines, publishers, internet services, civil liberties and biological patents. Significantly, the released text includes the negotiation positions and disagreements between all 12 prospective member states..."
DNS Policy Notes | Bloomberg BNA: "The text of the TPP's Intellectual Property Chapter calls for signatories to do just two things regarding domain names: (1) provide a cybersquatting remedy [UDRP] for ccTLDs along the lines of the Uniform Domain Name Dispute Resolution Policy and (2) provide a reliable and accurate database of domain name registrants [WHOIS] in the ccTLDs. All of the countries participating in the TPP -- except for Brunei (.bn) -- have what the TPP is looking for... Fast-forward to the May 2014 IP chapter draft. According to WikiLeaks, the cybersquatting provision appears to have been amended to each country's satisfaction:
Article QQ.C.12: {Domain Name Cybersquatting}
1.In connection with each Party's system for the management of its country-code top-level domain (ccTLD) domain names, the following shall be available:
(a) an appropriate procedure for the settlement of disputes, based on, or modeled along the same lines as, the principles established in the Uniform Domain Name Dispute-Resolution Policy, or that is: (i) designed to resolve disputes expeditiously and at low cost, (ii) fair and equitable, (iii) not overly burdensome, and (iv) does not preclude resort to court litigation; and
(b) online public access to a reliable and accurate database of contact information concerning domain-name registrants; in accordance with each Party's laws and, or relevant administrator policies regarding protection of privacy and personal data.
2.In connection with each Party's system for the management of ccTLD domain names, appropriate remedies, *shall be available, at least in cases where a person registers or holds, with a bad faith intent to profit, a domain name that is identical or confusingly similar to a trademark.
*It is understood that such remedies may but need not include, for example, revocation, cancellation, transfer, damages, or injunctive relief.
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24 October 2014
Domain Names, Trademarks, Elliot vs Google, Decision, Order, Analysis
How to lose your domain names (and $$ invested) real fast--UDRP followed by Court decision--
"During a two-week period ending on March 10, 2012, Plaintiffs used a domain name registrar to acquire 763 domain names that combined the word “google” with another brand" (from Court Memorandum below)
Elliot v. Google: Memorandum of Decision and Order (see further below for analysis):
Google successfully defended its trademark of the word Google against two Arizona plaintiffs who argued that "google" had become a generic verb and asserted, inter alia, that the GOOGLE mark has become generic. Legal Analysis below:
Use as a verb not always the kiss of death for trademarks: Elliot v. Google | Lewis Roca Rothgerber - JDSupra:
Further reading:
Google Fights Genericide Claim (and Wins)
List of generic and genericized trademarks - Wikipedia
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"During a two-week period ending on March 10, 2012, Plaintiffs used a domain name registrar to acquire 763 domain names that combined the word “google” with another brand" (from Court Memorandum below)
Elliot v. Google: Memorandum of Decision and Order (see further below for analysis):
Google successfully defended its trademark of the word Google against two Arizona plaintiffs who argued that "google" had become a generic verb and asserted, inter alia, that the GOOGLE mark has become generic. Legal Analysis below:
Use as a verb not always the kiss of death for trademarks: Elliot v. Google | Lewis Roca Rothgerber - JDSupra:
Further reading:
Google Fights Genericide Claim (and Wins)
List of generic and genericized trademarks - Wikipedia
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12 May 2014
Replace ICANN, Prohibit Trafficking in Domain Names, says Attorney
"... [The new] gTLDs are a mess—a legal quagmire for legitimate businesses. . . . the domain name itself, remains subject to all manner of abuse by infringers ... Of course, ICANN did provide the trademark clearinghouse for gTLDs. Admirable if inadequate." (emphasis and link added, source: Nicholas Wells, infra)
So says one enterprising trademark attorney in his article posted at: Replacing ICANN | Nicholas Wells. He proposes an INTA-managed domain system with terms such as the following:
"A. After requesting registration, each domain is subject to a 30-day opposition period during which 3rd parties can object based on pre-existing rights.... D. Domains that are not used within a given period and are not associated with the owner’s registered trademark or a version thereof (so as to provide for typos etc.) would be considered abandoned and would be shut down and returned to public availability.... F. Trafficking in domain names could be prohibited except under specific circumstances, such as for domains transferred as part of a transfer of related trademark rights..." (Emphasis added; read more at the Nicholas Wells link above)
In his article, Attorney Wells notes that INTA, the International Trademark Association, is holding its Annual Meeting in Hong Kong this week. Stay tuned.
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So says one enterprising trademark attorney in his article posted at: Replacing ICANN | Nicholas Wells. He proposes an INTA-managed domain system with terms such as the following:
"A. After requesting registration, each domain is subject to a 30-day opposition period during which 3rd parties can object based on pre-existing rights.... D. Domains that are not used within a given period and are not associated with the owner’s registered trademark or a version thereof (so as to provide for typos etc.) would be considered abandoned and would be shut down and returned to public availability.... F. Trafficking in domain names could be prohibited except under specific circumstances, such as for domains transferred as part of a transfer of related trademark rights..." (Emphasis added; read more at the Nicholas Wells link above)
In his article, Attorney Wells notes that INTA, the International Trademark Association, is holding its Annual Meeting in Hong Kong this week. Stay tuned.
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07 August 2013
Verisign UDRP, profits, growth
Verisign files first UDRP since 2007 | Domain Name Wire: "It looks like it goes through Google’s pay-per-click feed, so GoDaddy is paying for someone to click on an ad on its own lander. If Verisign chose to file an in rem lawsuit against a .com domain instead of a UDRP, the court could end up ordering Verisign to transfer the domain to itself…"
VeriSign 2nd-Quarter Profit Up 23% on Higher Revenue - WSJ.com: "VeriSign Inc.'s (VRSN) second-quarter profit jumped 23% as the Internet-domain-name company reported a double-digit increase in revenue and higher operating margins, lifting results above Wall Street's expectations. The company has posted double-digit revenue gains and higher income for nine consecutive quarters. VeriSign has spent the past few years shedding several Internet-related businesses, making it almost totally dependent on the mainstay Internet domain operation. VeriSign's domain-name business--which operates the registry for .com, .net and other domains--is based on a contract from the Internet Corporation for Assigned Names and Numbers, overseen by the U.S. Commerce Department. . . ."
Verisign does not forecast significant revenues from new gTLDs (if any) before 2014.--
Verisign Pre-Earnings: Expecting Modest Growth -- Trefis: "We expect the market share of .com and .net domain names in overall Internet domains to fall from 48.1% in 2012 to 46.6% in 2013. This is based on our forecast that the total number of registered .com/.net domains will increase to around 130 million by the end of 2013. At the same time, the total number of Internet domain names will increase to 280 million. We estimate slower growth in .com and .net domain names, as compared to the overall industry on account of competition from country code domain names and pending introduction of new gTLDs."
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VeriSign 2nd-Quarter Profit Up 23% on Higher Revenue - WSJ.com: "VeriSign Inc.'s (VRSN) second-quarter profit jumped 23% as the Internet-domain-name company reported a double-digit increase in revenue and higher operating margins, lifting results above Wall Street's expectations. The company has posted double-digit revenue gains and higher income for nine consecutive quarters. VeriSign has spent the past few years shedding several Internet-related businesses, making it almost totally dependent on the mainstay Internet domain operation. VeriSign's domain-name business--which operates the registry for .com, .net and other domains--is based on a contract from the Internet Corporation for Assigned Names and Numbers, overseen by the U.S. Commerce Department. . . ."
Verisign does not forecast significant revenues from new gTLDs (if any) before 2014.--
Verisign Pre-Earnings: Expecting Modest Growth -- Trefis: "We expect the market share of .com and .net domain names in overall Internet domains to fall from 48.1% in 2012 to 46.6% in 2013. This is based on our forecast that the total number of registered .com/.net domains will increase to around 130 million by the end of 2013. At the same time, the total number of Internet domain names will increase to 280 million. We estimate slower growth in .com and .net domain names, as compared to the overall industry on account of competition from country code domain names and pending introduction of new gTLDs."
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31 July 2013
Using an UDRP to steal a Domain Name
Rick Schwartz is naming names, and doing everyone in the domain industry a service--interesting reading at link below, and particularly note Rick's "explanation of reasons"--including "Plan B"--
Reverse Domain Name Hijackings 2000-2013. All 143 Cases Sorted by Year. - The Rick Schwartz Domain Name and Traffic Blog RicksBlog.com | Home of the "Domain King": " . . . . The ‘Reasons’ column is an attempt to identify and categorize the various circumstances cited by panels in support of a finding of RDNH. Explanation of Reasons: (there are a total of 11 categories at the link above--just 2 follow)
Bad Faith – No Evidence – the complaint provides no evidence of the respondent’s bad faith . . . .
Plan “B” – the complainant is using the UDRP as an alternative acquisition strategy after commercial negotiations failed . . . ." (read more at link above)
An "Alternative Acquisition Strategy"--Rick calls it as he sees it! And what does ICANN do to prohibit or penalize abuse of UDRP policy? Seemingly nothing--and they have been on notice since at least year 2000! Why not require UDRP complainants post $1,000,000, or have their claim dismissed, once a respondent asserts a RDNH defense? If complainant then posts the $1,000,000, and RDNH is found by the panel, the $1,000,000 would be split 80/20--80% to respondent and 20% to ICANN!
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Reverse Domain Name Hijackings 2000-2013. All 143 Cases Sorted by Year. - The Rick Schwartz Domain Name and Traffic Blog RicksBlog.com | Home of the "Domain King": " . . . . The ‘Reasons’ column is an attempt to identify and categorize the various circumstances cited by panels in support of a finding of RDNH. Explanation of Reasons: (there are a total of 11 categories at the link above--just 2 follow)
Bad Faith – No Evidence – the complaint provides no evidence of the respondent’s bad faith . . . .
Plan “B” – the complainant is using the UDRP as an alternative acquisition strategy after commercial negotiations failed . . . ." (read more at link above)
An "Alternative Acquisition Strategy"--Rick calls it as he sees it! And what does ICANN do to prohibit or penalize abuse of UDRP policy? Seemingly nothing--and they have been on notice since at least year 2000! Why not require UDRP complainants post $1,000,000, or have their claim dismissed, once a respondent asserts a RDNH defense? If complainant then posts the $1,000,000, and RDNH is found by the panel, the $1,000,000 would be split 80/20--80% to respondent and 20% to ICANN!
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26 June 2013
UDRP and Domain names with advertising or PPC links
BuyDomains.com Loses UDRP On 10 Tear Old Domain Name Frize.com | TheDomains.com: "There are a number of UDRP decisions which have addressed the resale of domain names, or the use of domain names for websites with advertising or PPC links. The panel in Media General Communications, Inc. v Rarenames, WebReg, WIPO Case No. 2006-0964 summarized some of the relevant principles as follows:
“These practices are most likely to be deemed legitimate under the Policy when:
- the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
- the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
- the domain name in question is a “dictionary word” or a generic or descriptive phrase;
- the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
- there is no evidence that the respondent had actual knowledge of the complainant’s mark.”
Here, the Respondent is clearly in the business of registering and reselling domain names, as well as using them to display advertising links." (more at link above)
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“These practices are most likely to be deemed legitimate under the Policy when:
- the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
- the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
- the domain name in question is a “dictionary word” or a generic or descriptive phrase;
- the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
- there is no evidence that the respondent had actual knowledge of the complainant’s mark.”
Here, the Respondent is clearly in the business of registering and reselling domain names, as well as using them to display advertising links." (more at link above)
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19 June 2013
Trademark Holder dotOrg Denied UDRP On dotCom
.Org Domain & Trademark Holder Denied UDRP On .Com | TheDomains.com: " . . . Common law rights are obtained with use of the trademark to identify certain goods or services in commerce and to distinguish them from those of competitors. Common law rights may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. Hence, to prove common law rights, it is necessary to file evidence regarding the extensive and continuous use, enough to be considered sufficient by the Panel as to identify the goods or services specified by the trademark owner. The evidence filed must show that the trademark has acquired secondary meaning, i.e., that the public associates the trademark with Complainant’s services. The Panel considers relevant evidence of secondary meaning include the income produced by the trademark (sales), the advertisement and media recognition. . . ." (read more at link above)
Company ordered to pay $5,000 after reverse domain name hijacking charge - Domain Name Wire: "Domain name attorney Zak Muscovitch has helped the owner of ClevelandCyclewerks.ca save his domain name in a cybersquatting arbitration case. Not only that, but the arbitration panel found the complainant guilty of reverse domain name hijacking and ordered it to pay $5,000."
Media Options Flips White.com: " . . . . Spending six figures on a domain name as an investment can be risky, but for someone like Andrew Rosener, it’s a calculated risk. The acquisition and sale of White.com shows that great domain names are liquid, and there is still a considerable amount of money to be made from flipping domain names for people who have knowledge about the market and a high level of risk tolerance. It also shows that there is a considerable amount of business done below the radar, not reported to DN Journal."
Company ordered to pay $5,000 after reverse domain name hijacking charge - Domain Name Wire: "Domain name attorney Zak Muscovitch has helped the owner of ClevelandCyclewerks.ca save his domain name in a cybersquatting arbitration case. Not only that, but the arbitration panel found the complainant guilty of reverse domain name hijacking and ordered it to pay $5,000."
Media Options Flips White.com: " . . . . Spending six figures on a domain name as an investment can be risky, but for someone like Andrew Rosener, it’s a calculated risk. The acquisition and sale of White.com shows that great domain names are liquid, and there is still a considerable amount of money to be made from flipping domain names for people who have knowledge about the market and a high level of risk tolerance. It also shows that there is a considerable amount of business done below the radar, not reported to DN Journal."
15 April 2013
Why Support the ICA
About Us | Internet Commerce Association - ICA: "Founded in 2006, the Internet Commerce Association (ICA) is a non-profit trade organization representing domain name investors, website developers and related companies. The ICA is made up of responsible businesses and individuals who have joined together to improve public confidence in Internet commerce. Based in Washington D.C., our mission is to promote and share best practices among participants in the domain name industry and to educate consumers, policy makers, law makers and the media about the value and benefits of direct navigation traffic and the domain name industry."
Nat Cohen: Why I Support the ICA: "Attempts to steal your domain through abuse of the UDRP, called Reverse Domain Name Hijacking, are on the rise (see RDNH.com). Why shouldn’t RDNH cases be on the rise? While an auto-generated ad on a parked page can result in the loss of a valuable domain, the penalty for intentional abuse of the UDRP through an attempt at Reverse Domain Name Hijacking is — nothing.
Now ICANN is finalizing details for the URS (Uniform Rapid Suspension) system. This offers a cheaper, faster way to take down your domains. It is being rolled out on new gTLDs first with the expectation that it will soon be required for dot-com and all other gTLDs. The URS is being sole sourced to the National Arbitration Forum (NAF), the same group that was found to be not trustworthy enough to handle credit card arbitrations"
WIPO Offers Insights on Domain Name Trends: "“Applying UDRP jurisprudence, WIPO panels in 2012 found evidence of cybersquatting in 91% of all decided cases.” This is also an enlightening number, as it seems to indicate that more disputes are ending in favor of trademark owners, which historically have obtained transfers in just over 85% of all domain name disputes at WIPO"
CitizenHawk sued after sending two cease & desist letters - Domain Name Wire: A San Diego man has sued typosquatting recovery firm CitizenHawk after receiving two cease & desist letters. Michael Eddy says he received letters regarding USSearchReports.com and Naturalizes.com. The first letter said USSearchReports.com infringes the rights of Intelius’ mark for “US Search.com”. The second said that Naturalizes.com infringes the rights of Brown Shoe Company’s mark for “Naturalizer”. The suit (pdf) says that the letters threatened a UDRP if the domains weren’t handed over. . . .
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Nat Cohen: Why I Support the ICA: "Attempts to steal your domain through abuse of the UDRP, called Reverse Domain Name Hijacking, are on the rise (see RDNH.com). Why shouldn’t RDNH cases be on the rise? While an auto-generated ad on a parked page can result in the loss of a valuable domain, the penalty for intentional abuse of the UDRP through an attempt at Reverse Domain Name Hijacking is — nothing.
Now ICANN is finalizing details for the URS (Uniform Rapid Suspension) system. This offers a cheaper, faster way to take down your domains. It is being rolled out on new gTLDs first with the expectation that it will soon be required for dot-com and all other gTLDs. The URS is being sole sourced to the National Arbitration Forum (NAF), the same group that was found to be not trustworthy enough to handle credit card arbitrations"
WIPO Offers Insights on Domain Name Trends: "“Applying UDRP jurisprudence, WIPO panels in 2012 found evidence of cybersquatting in 91% of all decided cases.” This is also an enlightening number, as it seems to indicate that more disputes are ending in favor of trademark owners, which historically have obtained transfers in just over 85% of all domain name disputes at WIPO"
CitizenHawk sued after sending two cease & desist letters - Domain Name Wire: A San Diego man has sued typosquatting recovery firm CitizenHawk after receiving two cease & desist letters. Michael Eddy says he received letters regarding USSearchReports.com and Naturalizes.com. The first letter said USSearchReports.com infringes the rights of Intelius’ mark for “US Search.com”. The second said that Naturalizes.com infringes the rights of Brown Shoe Company’s mark for “Naturalizer”. The suit (pdf) says that the letters threatened a UDRP if the domains weren’t handed over. . . .
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24 December 2012
Domain Holder Wins UDRP Without Attorney
Domain Holder Beats Back UDRP On ManhattanCenter.com, Without An Attorney
TheDomains.com
“Resolution of the question of bad faith registration of the domain name turns on a point which is undisputed by the parties, which is that Respondent acquired the domain name after seeing its appearance on a “drop list” of existing domain names which ...
Bloomberg: MDLive.com Sold for $200k
Elliot's Blog (blog)
1) This transaction serves as another piece of evidence that there is a huge amount of unreported private domain name sales that take place annually. I would say there are tens of millions of dollars in domain sales that are never reported. This number ...
Daily Dot | The Vatican literally wins the domain name lottery
The Vatican's dominance of the Internet continues as the Catholic Church's bid to control the top-level domain .catholic in Chinese might come true. The Internet ...
When should a domain name be your product name, vs. a phrase ...
The first domain is better. The second domain doesn't make any sense.
www.linkedin.com/answers/.../1079478-26249193?...
TheDomains.com
“Resolution of the question of bad faith registration of the domain name turns on a point which is undisputed by the parties, which is that Respondent acquired the domain name after seeing its appearance on a “drop list” of existing domain names which ...
Bloomberg: MDLive.com Sold for $200k
Elliot's Blog (blog)
1) This transaction serves as another piece of evidence that there is a huge amount of unreported private domain name sales that take place annually. I would say there are tens of millions of dollars in domain sales that are never reported. This number ...
Daily Dot | The Vatican literally wins the domain name lottery
The Vatican's dominance of the Internet continues as the Catholic Church's bid to control the top-level domain .catholic in Chinese might come true. The Internet ...
When should a domain name be your product name, vs. a phrase ...
The first domain is better. The second domain doesn't make any sense.
www.linkedin.com/answers/.../1079478-26249193?...
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