Brands, Trademarks, and Domain Names
101domain CFO, Anthony Beltran participated in a panel at the Nameson trade show this year called, Domains, Brands, Trademarks, and the Law. Four of the participants were trademark attorneys. Anthony is a sought-after panelist in these types of discussions because of his expertise on domain names.
The discussion was facilitated by Darren Newman, who is an Attorney at Newman Du Wors LLP. Other participants included, Mike Rodenbaugh, the Founder of Rodenbaugh Law, Gary Saposnick, a Trademark and Domain Name Attorney at TMNetLaw, and Marc Tracktenburg, an attorney and Shareholder at the Greenberg Traurig Law Firm in Chicago.
Below is a video of the first part of the discussion and then below that, my notes on the issues discussed.
DN – Basics – What is a trademark and why is it important to protect?
MT – A trademark is an indicator of the source for any product or service. There is great value in knowing that to consumers and it is important to protect it
DN – What about domain names? If I register a domain am I good? Do I need to protect it somehow?
GS – Domains are first come first served but that doesn’t mean that it is not infringing.
DN – What kind of diligence should a registrant do to protect themselves from getting sued.
MR – It’s impossible to prevent every chance of lawsuit. Almost every word in the dictionary has some sort of trademark in some category somewhere around the world but a good place to start is either the USPTO (U.S. Patent and Trademark Office) or OHIM (Office of Harmonization for the Internal Market) websites. At least you can have an indication of what is there. Also, be careful about parking domain names. Parking companies don’t usually do any clearance for trademark and can put you at further risk.
MT – Those are good sources but consider also just checking Google. There is so much information there. It’s easy, free, and an easy way to at least begin your research.
DN – But since trademarks are based on the likelihood of confusion and not just on words, how can a registrant test for that?
MT – It’s almost impossible to test for every case. That’s where legal counsel might be advisable. A lot of this depends on your risk tolerance.
NT – On the registrar what does 101domain do to protect registrants from getting sued? What are some best practices?
AB – There are two sides of the coin. We have customers on both sides, those who have trademarks and smaller businesses who don’t. The first thing to consider for those with trademarks is the TMCH (Trademark Clearinghouse). This protects users on both sides of the fence because it sends out notice to registrants who may be trying to register domains that could infringe. This is good for everyone involved because it helps a registrant to know that there is possible risk and also helps trademark owners be sure that any potential infringer is on notice.
NT – If a trademark holder finds that someone is infringing, what are their remedies?
MT – If the trademark was secured before the domain name was registered and the domain name registrant has used the domain name in bad faith in the same class of business, the UDRP (Uniform Dispute Resolution Process) may allow that the domain be canceled or transferred to the trademark holder. There is no monetary damage or injunctive relief. The Anti Cybersquatting Consumer Protection Act (ACPA), which is the traditional trademark statute in the U.S. In this standard, all you have to do is show that the domain was registered, used, or trafficked in the domain name with a bad faith intent to profit. The drawback here is that your are involved in Federal court which can be expensive. But in court, in addition to acquiring the domain name, you can get damages of up to $100,000 and attorneys fees. Also most registrants won’t respond.
NT – Mike, do you want to discuss the URS?
MR – Baked into the new gTLD process, there is also the URS (Uniform Rapid Suspension) service. Brand owners fought to have this as part of the new gTLD program. Many of them feel that the UDRP is too slow. URS is faster and cheaper. The filing fee is around $300 USD verses $500 to over $1000 for a UDRP filing. The big difference though is that there is a higher burden of proof. You have to show bad faith and use by clear and convincing evidence. The other thing is if the brand owner wins, they don’t get the domain name. Rather, the domain name is just suspended until it expires, then it goes back into the drop and can be picked up by anybody. In my opinion, it’s only useful if there is some crime or really bad situation happening.
MT – I’d suggest that if there is a crime going on, there may be times you should go to court. In almost all cases, it’s best to start informally though and use these methods or court as a last resort. It’s best not to start with these options and generally better just to reach out to a registrant first. In fact, sometimes you can solve the problem by contacting the registrar or hosting company that is being used for domain.
Audience – What about to the right of the dot?
GS – You will likely begin to see more cases where domains with trademarks as part of the domain to the right of the dot will be involved. You have to be careful to put something up right away on your site because if you don’t, keyword searches may begin to pick up pay per click sites and you could have a problem on your hands.
NT – Is it really about bad faith? If you don’t plan to use it in an infringing way can you still register a domain where a warning pops up?
MR – Yes you can. There is still a risk that a company may think you’re infringing. Some of them won’t care and go after you anyway.
NT – What if you are going to use the domain in a completely different industry or class?
GS – It has to pass the smell test. If you have a good faith use, you should be in good shape, but if you have a portfolio that consists of a lot of names that are confusing you can have a problem.
NT – Should registrants be concerned about registering a new gTLD even if they have a non infringing use?
MT – You should still be careful. It depends on your tolerance for risk. Be prepared to respond and defend yourself. Have a case that is defensible.
Audience – Does it now come down to a question of “Is there confusion regardless of where the term exists (left or right of the dot)?
AB – We’ve seen some cases where, as long as there is no bad faith, cases requesting relief with terms to the right of the dot were looked at and claim denied because there was no bad faith.
Audience – Amazon.com applied for .amazon, why didn’t they get it?
MR – Amazon followed the rules and applied. However the countries of South America objected and lobbied ICANN. ICANN disallowed it. Things may change. I think that Amazon should have been allowed to get this. They followed the rules.
Audience – How is 101domain handling claims notices to registrants? How do you think a registrar should handle this?
AB – At 101domain.com, we show the TMCH claims notices. Yes, it is a detriment to the sales process, but we felt that it was important to notify registrants according to the TMCH rules. One thing to note is that they are only shown for 90 days after TLD launches in general availability. We’re doing it that way.
GS – A trademark holder should still monitor their marks. A TMCH isn’t the only protection out there. It does help though.
MT – Also remember that the claims notice doesn’t prevent someone from registering a domain name; all it does is put them on notice. Registries and registrars only offer domain registration service. They don’t offer trademark advice. There are cases that show that if they offer more than that, for example, privacy or parking services there is the possibility for liability. Registries and registrars should be cognizant of this.
Audience – What does a trademark owner have to get their marks on that TMCH.
MR – It costs around $300 per year and all a trademark owner has to do is to show that they have a trademark and fill in a form through a registered agent.
Audience – Why did Amazon get .book and not .amazon?
MR – The publishing industry was up in arms about Amazon getting .book but the publishing industry doesn’t like a lot of what Amazon is doing.
Audience – Many policy processes are hardly being used. Why is that?
MT – It’s true, on a relative scale, the use has been quite low. URS doesn’t award the domain so it’s not really a great remedy. The other policies may be used in the future but they were mostly created out of an abundance of caution.
GS – The clearinghouse allowed brands to take advantage of the Sunrise periods but many haven’t participated. Maybe they don’t feel it is worth it.
Audience – If you have no intent to sell or use a famous person’s name as a domain name, such as a Senator’s name, is it ok to register it?
MR – Be very careful. Famous names can be treated just as trademarks.
GS – If the domain is used only for commentary, it can be deemed as fair use, just be careful.
Audience – What about Reverse Domain Name Hijacking; what can a registrant do in the case of a badgering company who is trying to hijack your domain? Is there any legal action that can be taken against a company that does this?
MR – There have only been a couple where courts have awarded damages. Generally you don’t get anything; some of us have been pushing the envelope and there have been some wins.
GS – There are some cases where attorney’s fees have been awarded but you better have a really strong case because it’s not common for judges to award damages. Federal courts can be very expensive.
MT – You also better have a good business case. It can cost you $200,000 just to feel good about winning. Federal court is expensive.
NT – Anthony, once someone files a UDRP, what becomes of the domain name?
AB – Well in the cases of both a UDRP and a URS, a case is filed and the defendant is notified. We’re notified as well and the name gets locked. Some registrants, in the past, once they got wind of a UDRP being filed, would try to transfer a domain to another registrar to delay action. Now, everything is locked down so that doesn’t happen any more. Then we just have to wait until a decision is handed down and act according to how it is resolved.
DN – Thank you all for attending and thank you to our excellent panel for answering all these questions.