Cybersquatting and Trademark Infringement in the Global Domain Sector

Explore topics around cybersquatting and trademark infringement in domain names. We will provide you with solutions to better advise your clients on various prevention methods, and the quickest and cost-effective paths to resolution in international domain name disputes. You can watch the webinar here.

Transcript:

Anthony:

All Right, ladies and gentlemen, while we have, people are still trickling in, I want to welcome everybody here today on this beautiful Wednesday to our second in a series of ongoing webinars that we are doing on a quarterly basis. This one entitled, “Cybersquatting and Trademark Infringement in the Global Domain Sector”. As many of you know, and, and I see a lot of familiar faces on the attendee list, 101domain is a global domain name registrar. We have arguably more accreditations than any other registrar out there. In all new GTLDs, legacy generics and pretty much every country code you can imagine, and as you can also imagine with that navigating the landscape in terms of trademark infringement and brand protection when it comes to domain names can become a little bit overwhelming and a little bit complicated.

So this particular webinar today is, is designed to give you some insights on that and give you an overview of how the global domain system works in this aspect. I’m just want to point your attention to, your Go to Meeting functionality. We have included a couple of handouts that you’re able to download during or after the Webinar and we do have a person moderating the chat channel, so if you have any questions that come up during the Webinar, we will have a Q&A at the end. So hopefully we can get to all those questions in time. And with that, thank you all for attending. And I’m going to hand it over to Kimberly who is our Senior Corporate Services Executive. Then she’s going to take it from here.

Kimberly:

Thank you, Anthony. Welcome to everyone and I’m Kimberly Darwin, the Senior Corporate Services Executive at 101domain. And that means I work with the corporations, a lot of law firms and helping you maintain your brand on the Internet. So what we’re going to talk about today with 101domain is will always have something centered around a domain name or enabling you to better use domain names. So this webinar will also discuss that. And because they are such a significant part of brand visibility, we really do want you to be educated on how they’re being used both by your clients and other people who may not really have the right to use them. So with that said, we will start by talking about who owns domain names. So besides you or your client owning domain names, there are other people who have an interest in owning them.

And the two major groups are the domain investors and the cybersquatters. So domain investors will generally be your speculators. Those people who are watching what’s coming up as far as trends are concerned, putting words together and then registering them in advance of that trend. And that’s been going on since. So let’s see, when did I start in the, in the nineties where people were saying, oh, that sounds like a good idea. I’m gonna go get that domain name. So these people were doing it from a speculative basis, hoping that it would turn out to be profitable for them. And as you can see with insurance.com, that was the highest recorded, publicly recorded domain names sale at 35.6 million. So you can see that these names are paying off. Insurance.com would have been one of those that was registered way, way, way back by an investor.

So the investors are pretty savvy for the most part, they understand the market, they understand the legal nuances and the trademark rights of owners and a domain investor that’s been around for any length of time is going to know to stay away from trademarked domains. And that is a little bit different from the flip side. The cybersquatters over here who will knowingly purchase a domain with the intent to make profit like a domain investor does, but they do it for different reasons. So three of the reasons that I’ve listed here, they divert traffic from the legitimate brand owner, meaning I’m going to have some examples on the next slide. Meaning that they are intending to kind of piggyback off of someone’s established brand and use those visitors who think they’re visiting the actual brand for all sorts of things like number two, harvesting their sensitive information like phishing or selling them counterfeit items, which is in the case of fashion, makeup, even motorcycles and cars at this point.

cybersquatter versus a domainer domain investor

Cybersquatting is not only a threat to your brand image and goodwill, but can cost your company considerably.

So those are the two main reasons that someone that would be called a cybersquatter and that’s in quotes, of course, would be purchasing a domain, but the majority of them really do purchase it to sell it back at a profit thinking that they will keep the price of the domain name, hopefully underneath the cost of a dispute and be able to make a profit on the name and that backfires quite a bit. And as we get a little more savvy in this area, it’s going to backfire for them more hopefully. And when it comes to both investing and cybersquatting, the domain name extension does matter. So those generic top-level domains like .com and .net, .info, those that you’re commonly used to seeing businesses associating their main sites with, those are governed by ICANN. So there’s a dispute policy involved in that and it’s very structured now when it comes to country code domains, that’s a completely different world because they are not governed by ICANN and each registry can have its own dispute process or none whatsoever.

Google Facebook and Target typosquatting

And so when your client’s brand is being abused by a country code domain, you have a little bit of a different path to take in order to dispute their ownership. Okay. So we’re going to go over a couple cybersquatting trends that are showing up right now, typosquatting, that’s been around a long time and it’s still prevalent. I’ve put three examples up here. You can see facebok.com, gogggle with three g’s. Target with two t’s, very easy to pick up and very easy to abuse because, you know, I’m sure you’ve been in a hurry and you’ve typed into your address bar or something, a misspelling. And that’s what these typo squatters are banking on. So they’ll set up a mirrored site that you know you’re so busy you don’t even realize that you’re on. Another trend is, I’m sure that you’ve probably seen this if you’re used to hovering over links in your email before you click on them and when you see that in the lower left-hand corner where it’s got unionbank-security.com, that’s definitely something you would want to question.

It’s very easy to buy a domain with these hyphens in them and they are not always caught by the brands monitoring system. And so very easy to set up a phishing site with something like this. Okay. And also we’ve got homographs attacks which are relatively new and this is abuse of the characters in a domain name. So if you can see on the right-hand side, we have Amazon.com with two different A’s and you’ll see one of them is the Latin, A, one of them is the Cyrillic A and you really can’t tell even when you’re hovering over those links in your email. It could be difficult for you to tell based on your computers, configuration, all sorts of things. So homographs attacks are pretty new now and I have had quite a few of my clients asked me for a report of what are the possible homographs attacks that are available for my brand and we can make you that report that is free of charge if you are interested in that.

And it’s pretty amazing. The last one I did had probably about 300 different permutations for that particular term. So there’s quite a few. And with that said, just in case you don’t know, there is a way to block those terms with a DPML block. Identity Digital is the registry that has released 241 different extensions right now, which you can see on the right. They do include a block that you can purchase for your brand or your client’s brand. And now they do include that homograph protection. So you don’t even have to worry about registering those names. If you are interested in the block and it works for you, they’re automatically covered. So something to think about there. And as far as disputes are concerned, the UDRP and the URS, we talked about that in the last webinar a little bit about how you can file these disputes for any registry that is governed by ICANN.

You would have to prove the three points here that the name was registered in bad faith and that could be from the information you gleaned from the WHOIS, by obvious use and the content listed on the site and whether you’ve got the history of that registrant registering names that have been in disputes before. So all of those things can help you determine that. And also to prove that there is no legitimate interest in using the trademark. So for instance, a Armani purchase his domain name armani.com, and although it does conflict with kind of a popular brand, he has a right to the name. So you would have to prove that in your dispute that this person does not have legal, legitimate interest in that name. And finally that the domain name is confusingly similar to the trademark and that would be using those three examples from above homographs, typosquatting and combosquatting. So those things you would be needing to prove during your dispute with UDRP, which would transfer the name to the brand owner or URS which would suspend the domain name so that no one can use it and it expires out naturally.

And so when we get to country code disputes, it’s a little bit different because they are not governed by, ICANN. Now, some may choose to follow ICANN guidelines which makes everybody’s life easier when they do, but there are quite a few that are just basically the wild west out there. And you will have to adopt their process if you are interested in disputing a domain name ownership in that region. So for instance, China, they have a two year deadline and this has come up a lot with people lately, when you’re not monitoring your brand’s name and then all the sudden you do, you have these reports, have names that are very, very much in, in infringement of your brand and there are over two years old. China doesn’t allow you to dispute those anymore other than using a civil suit. So Chinese trademarks also will override other trademarks outside. And so it’s very easy to apply for a trademark which we’re going to see in the next slide. Someone did for Michael Jordan’s name and be awarded a trademark in China which gives you the right in China to own that name. So these are some of the challenges that you might encounter if you’re disputing in China.

China

2-year deadline
Chinese trademarks for popular brands are commonly awarded to anyone requesting them.

Brazil

Has own dispute process similar to UDRP

Russia

Has no dispute process
Civil litigation is necessary

With Brazil, we’re doing one in Brazil now and they have a similar dispute process to UDRP and that at least you can kind of recognize the process that’s going to be follow, proving the same three things, a documentation showing that you have legitimate interest in that brand, that sort of thing. And on the flip side, Russia has none, so no dispute process whatsoever, in which case you are obligated to use civil litigation if you are unable to purchase the name. My experience lately is that with Russian names, the sellers have been good about coming to a fair asking price for the name to avoid that civil litigation, but know that it can happen if you are working on a .ru name.

And this brings us to a Michael Jordan. This is a really fantastic example of a Chinese resident obtaining a trademark in his name in Chinese and you can see that on the lower left-hand corner and he didn’t like that. So they were creating apparel and shoes and everything with that logo, using his name without his permission. So he did go to court and he did win and it did set a precedent for protecting his name and personal names in cases like this. So hopefully we’ll see an upswing of positive outcomes related to this and if you want to read about that, I’ll make sure that that link is sent out so you can read more about that decision. Here’s another one with Groupon and there was an Australian company that formulated itself after the Groupon a model in Australia called themselves Scoopon and then applied for a trademark in Australia for Groupon and in Australia, if you have even an application for a trademark, you have a right to purchase the name related to it. So that’s what Scoopon did. And there was a lot of back and forth as to the ownership of the name, who deserves the name and apparently they are following through with a civil suit because they could not come up with some sort of agreement.

And if you should have any kind of abuse issues, know that there almost always is a way, almost always, even if it includes civil litigation to deal with these owners. And hopefully, they’re just domain investors. Hopefully, everything works out okay where you can negotiate a price or the dispute is settled in advance, but if you do have any questions about that, make sure you do ask them in the questions area and we will, we will work on that answering all of those. And as far as the DPML, we discussed that very briefly in the webinar. We are going to have another webinar on December 6th.

It’s going to be specifically about the DPMLs. So if you or your clients are interested in learning about how the brand can be protected across all of the Identity Digital extensions, we’re going to have Matt Bamonte from Identity Digital on there with us for a question and answer session, very relaxed, and you’ll be able to ask any specific questions as to what’s covered, whether it will be worth it for your client, a retroactive registrations which it does cover, meaning things that have already launched. You can even block those. So that should be an informative session. And so I am going to open it up to questions now and if anybody has any questions, I think we have none just yet, but I see somebody typing.

Anthony:

Kimberly, I want to mention. This is Anthony guys. On homographs attacks, I just can’t reiterate enough. This is a new trend that we’re seeing. It’s very hard to detect for a user and for a brand owner, quite frankly, when you’re talking about different character sets, you’re getting into internationalized domain names and you really have to look at the coding behind these to recognize them. I can tell you from experience, 101domain we’re very aggressive in protecting our name around the world. We have the term 101domain and 101domains and variations registered in a ton of jurisdictions we have seen personally, in some homogrpah type registrations that we’ve had to deal with and they pop up for us periodically. So I really do recommend, as Kimberly mentioned, we can run a report for you or for your client on these. So at least you get a sense of what’s out there. If any of these names are currently registered, we can help you zero in on those and really just put it in front of the client or the decision makers in your organization. Because it is a known threat, it is something that is happening and I suspect it’s going to be happening more and more as word kind of gets out on this particular tactic.

Kimberly:

Well, thank you. I agree. And I’ve actually had people send me some of these homographs and I was completely confused. I’m thinking, what are you talking about until I ran it through. We have a tool on our site that will pull out the language for you and also translate for you so that you can check what those unicode numbers are and make sure that you’re actually going to the right site. Now it is a huge thing and it is very hard to miss. And so we do. This actually brings us to a question.

Domain Disputes Q & A

Question: “What are the preventative steps one can take to avoid cybersquatting?”

Answer: Well, basically you’ve got two lines of thought, the defensive registrations where most of my clients have chosen to do that, where we’ll create a gap report for you, which is free and allow you to see who owns your names and who doesn’t own your names and if you can defensively scoop those up, it will be an easier path for you or your client by owning those names and just directing them to your main site.

Other than that, monitoring does definitely help. If you have a brand that’s very volatile, meaning that you’ve got a lot of counterfeiters or you’ve got people who are maybe a bank or a law firm anywhere where sensitive information could be collected, then you very well might want to be involved in some kind of monitoring so that you can watch those. The DPML block, great idea. It works for many people depending on your sector. So we’re always happy to consult with you if that is maybe an option that you might consider for your client.

Question: “Is the homograph registrations, are they allowed for generic extensions or donut extensions only?”

Answer: They are allowed for almost everything, but it, and Anthony, you can correct me, but I’m almost positive that anybody that allows any other kind of alphabet outside of Latin, it would apply to them.

Anthony:

That’s correct. And if you look at .com as an example. .om allows a few dozen different characters sets to be registered as .com names. So the strings in front of the dot of course. And really most of the generic names do allow quite a few character sets and quite a few, I would say probably the majority of the country codes do as well. If you go to our website there is a section on the site that gives you insight into the different language sets. And we can always provide you that information as well on request. But it is a technical capability that most TLDs do allow.

Kimberly:

Okay. Thank you. We have a question. Hi Rob. Nice to see you here.

Question: “What is the current price point for paying for squatted domains versus filing action?”

Answer: That’s a really good question and it depends on where that dispute would be, but assuming that you’re talking about a UDRP or URS or even those countries that have been following that sort of UDRP process, it’s generally between, it’s usually about $4,000 or less and that, you know, depending on whether you’re charging billable hours or what that would be, but you know, the legal expenses on top of the filing fee, I would say roughly $4,000. And I’m seeing this in Russia, they’re really good about knowing what those thresholds are and they are pretty good about staying within it and giving themselves enough profit and making the transaction easier if you do come to a buying price and go through with that transaction.

And let’s see, you left me another question.

Question: “What is the current ratio of UDRP versus URS with regard to clients choosing one or the other?”

Answer: That’s a good question. I don’t have the exact numbers, but I’ll give you pretty close. It’s about 92% UDRP to 8% URS, and I am under the impression that there are two reasons for that. The first reason is that a lot of people don’t know about the URS as much. And the second reason is that you really have to have a very, very solid case in a URS. Really, really, really obvious trademark infringement because it’s such a quick decision by one panelist. So, UDRP still is reigning and I think we did have a slide in there where it said that maybe about 80% of the UDRPs are going on the complainant’s side, meaning that they are being transferred to the brand owner. So that’s, that’s good news.

And let’s see.

Question: “Is purchasing someone else’s branded domain name illegal? What if they have an affiliate program and you are using the domain to generate business for them while also generating affiliate income for yourself?”

Answer: I’m not a lawyer and so I won’t be answering whether it’s illegal or not, but I have seen cases where a brand owner has not understood that a domain name was purchased for use may be by a distributor which happens a lot in the vitamin industry, and they’re actually selling their product. They think that they’re doing good by using that brand, but they still may be infringing depending upon whether there is an agreement in place for them being able to use that brand in a domain name. So it is case by case basis on that one.

Anthony:

And that Kimberly, I would say if it’s a generic name or a name that’s under UDRP, it’s not a question of illegal or not. It’s whether the trademark holder is able to use the URDP process to get that name back. So it’s the three tests really. Does the user have rights to the name? Is it damaging the company that you’re attempting to be an affiliate for? And those do get into gray areas. You know, I think we’ve seen business models in the past that have focused on this type of thing and it’s gone in either direction. Some companies, are they willing to work with those users developing those sites. Others have had a pretty strong enforcement stance on that as well.

Kimberly:

Okay. Yeah. And I have seen it on both sides. Some brands really do rope in all of those domain names and some just allow them to continue on with the use if they feel like it’s not infringing on their trademark, they’re just trying to expand. So you would definitely have to look at each case on that one.

Question: “Do we provide domain monitoring services for homographs registrations?”

Anthony:

Answer: We do and our monitoring service that we provide it does accommodate for homographs and we can send you more information on that after the Webinar.

Kimberly:

Okay. Let’s make sure I got every question here.

Question: “How long does the dispute process typically take?”

Answer: I think that we’re probably talking about if we’re talking about a UDPR or URS. Oh my, let’s see. It really depends on how responsive everybody is, but the one that we’ve been doing for Brazil with the country code is probably three to four weeks. We would hope that UDRPs would probably stay in the two-week range and the URS do seem to be much quicker since it’s your faster decision. So if that’s a service that you’re providing for your client, make sure that you’re setting those expectations.

Okay. Any more questions. Let’s see.

Anthony:

I did want to go back everyone, sorry Kimberly, to the IDN tool that you mentioned, if you guys go to our website, down to the footer on the bottom menu at the bottom of the homepage, you’ll see under resources and tools a link titled IDN Conversion Tool. So that will allow you to put a name in there and it will spit out the results of what it is, whether it’s just Latin characters or a different character set. So it’s a good tool to have handy. There are other tools like that out there as well. And additionally, if you go to any domain extension product page on our website, you will see at the bottom of that product page the different language sets that are available to be registered for that specific TLD. So also a good resource for you to keep in mind.

Kimberly:

Okay. I think we got one more question.

Question: “So for a company to take back a domain name, do they have to have registered their trademark before the domain was registered or is it possible to take it back if other criteria are fulfilled?”

Answer: 99%, and you can correct me Anthony if you’ve seen more than this, but 99 percent of the time, yes, I think I have seen one fluke where someone registered or within the process or it was literally days between when the domain was registered and when the trademark was awarded. However, for the most part, you would need to have that trademark already awarded with few exceptions, Australia being one where you’re allowed to have an application, but that’s a rarity. You would have to have that trademark already registered in order to show those three things.

Anthony:

That is correct. And that goes to the question, did the registrant have legitimate rights to the name if there’s not a trademark registered for the name is going to be difficult for the complainant to make that argument that when he registered the name, someone else had a right to the name at that time.

Kimberly:

Excellent. So not only filed, but registered that is correctly understood. Yes. Like I said, with very few exceptions, Australia being one of them. And Lisa, yes. This, this session is being recorded. We will have it available for you within 24 hours and hopefully this has been good for you and you can review it and feel free to reach out and ask any questions of us because they are sure to pop up later. I do have another question. I’m not sure I understand it.

Question: “Is there any recognition for well-known marks which are not registered?”

Kimberly: Are you referring to marks as opposed to Emoji or I might need a little bit more information on that question. I’m not quite sure I understand that. Do you understand that?

Anthony:

Answer: Yeah. I think they’re referring to well-known trademarks. So if a name, a trade name is well known, but it’s not a trademarked name, meaning it’s not a trademark registration, whether that that meets the requirements. I can’t think off the top of my head as far as UDRP goes. I’ve seen a case where the complainant did not have a trademark. Usually it’s pretty clear that they have a trademark, they have rights. There are things, you know, again, we’re not attorneys, but there are common law rights and I think in some jurisdictions and country codes out there, may recognize that. As far as civil suits, you know, there’s a lot more factors in play when determining who has rights or not to a particular name.

Kimberly:

Yeah. And now that you, you’ve explained it, I do see that there is kind of a trend of celebrities are fighting for their name, just as we saw with Michael Jordan. And on the flip side, we’re here to register domains, we often have some of these country code registries that make us prove that the person, the actual celebrity or a high profile individual that’s trying to register the name is who they are. So there are plenty of those registries that are concerned about awarding these domain names to people who really do have legitimate interest in them. So it’s not just one sided, there are plenty of registries who just didn’t want to get involved if it’s going to end up being litigation later. So there will request documentation with signed, maybe they want their autograph, I don’t know, but signed information that proves that, sorta like the check mark in twitter. I am who I am and I really want this domain name for me. So hopefully that answered your question. Any other questions before we wrap up?

Okay. Thank you. I’m glad I answered your question and otherwise feel free to reach out to us and thank you so much for staying with us here today on Wednesday. And hopefully this was informative to you. And again, thank you so much for visiting and have a great day.