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Presenting a live 90-minute webinar with interactive Q&A

The URS, UDRP, ACPA and Beyond:

Domain Name Enforcement in the gTLD Era Strategies for Brand Protection, Leveraging Recent Decisions, Weighing the Pros and Cons

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

TUESDAY, MARCH 7, 2017

Debra L. Innocenti, Partner, Innocenti Jones, San Antonio

Jonathan S. Jennings, Partner, Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago

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Contents

I. Domain Name Basics

II. Anticybersquatting Consumer Protection Act (ACPA)

III. Uniform Domain Name Dispute Policy (UDRP)

IV. Custom Policies

V. Uniform Rapid Suspension System (URS)

VI. Monitoring for Infringements

VII. Choosing Dispute Options

5

I. Domain Name Basics

6

Internet Naming and Addressing System • The Internet Assigned Numbers Authority (IANA)

functions ensures that the Internet works • The IANA functions are the allocation and maintenance

of the unique codes and numbering systems used in technical standards (“protocols”)

• Domain Names. Management of the DNS Root, the .int and .arpa domains, and an IDN practices resource.

• Number Resources. Co-ordination of the global pool of IP addresses and Autonomous System Numbers (ASNs), providing them to Regional Internet Registries (RIRs).

• Protocol Assignments. Internet protocols’ numbering systems are managed in conjunction with standards bodies.

7

How unique identifiers work.

The domain name is sent to a server that translates the name into a number (the Internet protocol or IP Address) that the server uses to direct your request to the website’s network location. Those names and numbers are called “unique identifiers” and are aligned with a standard set of protocol parameters that ensure computers can talk to and understand each other.

When you visit a website, you type the site’s domain name into your browser or you click on an html link. That domain name is a unique identifier.

8

ICANN.

• The Internet Corporation for Assigned Names and Numbers (ICANN) is the private sector, non-profit corporation created in 1998 to assume responsibility for ensuring the Internet’s stable and secure operation.

• ICANN contracted with the U.S. Commerce Department’s National Telecommunications and Information Administration (NTIA) to perform the IANA functions.

9

IANA functions transition.

• On March 10, 2014, NTIA announced the transition of IANA functions to a a global multi-stakeholder community.

• Public Technology Identifiers (PTI) was incorporated in August 2016 as an affiliate of ICANN and began performing IANA functions in October 2016.

10

Domain name registration.

A domain name registry is an organization that manages top-level domain names. It creates domain name extensions (e.g. .com, .net, and .org), sets the rules for that domain name, and works with registrars (e.g. GoDaddy) to sell domain names to registrants.

11

Parts of a domain name.

http://www.domain.com

Application transfer protocol

Host name

Second level domain name

Top level domain

12

ICANN created.

NTIA contract for IANA

functions.

1998

1999

ACPA enacted.

UDRP launched.

2013

URS launched.

2014

NTIA announces transition of IANA

functions to global multi-stakeholder community.

2015

IANA contract expires.

2016

PTI incorporated and begins

functioning.

2012

2008

ICANN announces thousands of gTLD apps that rollout

through 2013.

ICANN starts new process of

introducting new gTLDs.

13

II. Anticybersquatting

Consumer Protection Act

14

Goal for ACPA

• Act signed into law on November 29, 1999

• Goal of the Act: “to protect consumers and

American businesses, to promote the

growth of online commerce, and to provide

clarity in the law….” S. Rep. No. 106-

140, at 4.

15

Cause of Action

• ACPA created a cause of action under the

Lanham Act against one who, with bad faith

intent to profit from a mark, registers,

traffics in, or uses a domain name that is

(15 U.S.C. 1125 (d)):

• Identical or confusingly similar to a mark

that was distinctive at the time of the

domain name registration, or

• Identical or confusingly similar to or dilutive

of a mark that was famous at the time of

the domain name registration

16

Cause of Action

The Act also protects personal names or

words protected by reason of 18 U.S.C.

706 and 36 U.S.C. 220506 in the same

manner as marks, e.g., Olympic Names,

Red Cross, etc.

17

Bad Faith Factors under

ACPA

• Statute creates non-exhaustive list of factors

to determine bad faith (or lack thereof):

• Any trademark or other intellectual property

rights alleged violator has in the domain

name

• Legal name of person or a name commonly

used to identify him

• Person’s prior use of domain name in bona

fide offering of goods or services

18

Bad Faith Factors under

ACPA

• Intent to divert consumers from the mark owner’s online location… that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating likelihood of confusion

• Offer to sell, transfer or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having the intent to use, the domain name in a bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct

19

Bad Faith Factors under

ACPA

Provision of material and misleading false

contact information when applying for

registration of the domain name,

intentional failure to maintain accurate

contact information, or the person’s prior

conduct indicating a pattern of such

conduct

20

Bad Faith Factors under

ACPA

• Registration or acquisition of multiple

domain names known to be identical or

confusingly similar to the marks of others

• Extent mark incorporated in domain name

is or is not distinctive and famous under

section 43 (c)(1) of the Lanham Act

21

SPORTY’S FARM LLC v.

SPORTSMAN’S MARKET, INC.,

202 F.3D 489 (2d Cir. 2000)

• SPORTY’S for mail order catalog company for

aviation and houseware products versus

SPORTYS.COM in connection with a site used

to sell Christmas trees

• SPORTYS.COM was owned by a subsidiary of a

competitor of the owner of SPORTY’S

22

SPORTY’S FARM LLC v.

SPORTSMAN’S MARKET, INC.,

202 F.3d 489 (2d Cir. 2000)

• Bad faith because: • Court affirmed finding that Sportys.com registered with the

primary purpose to prevent the owner of SPORTY’S from

using that domain name

• Court emphasized that bad faith factors are non-exhaustive

and facts of this case did not squarely fit into those factors

• No prior bona fide offering of goods or services by

owner of website

• Plan to enter direct competition with SPORTY’S

• Website owner had knowledge of SPORTY’S

23

SHIELDS v. ZUCCARINI, 2000 WL

298300 (E.D. Pa.), affirmed 254

F.3d 476 (3rd Cir. 2001)

Court preliminarily enjoined use of JOE

CARTOON domain name variations

24

SHIELDS v. ZUCCARINI, 2000 WL

298300 (E.D. Pa.), affirmed 254

F.3d 476 (3rd Cir. 2001)

• Defendant used site for commercial purposes

before dispute and then after the filing of the

action converted it to a political protest site

• Defendant had registered thousands of

domain names that were similar to other

famous marks or personal names

• In finding compelling evidence of bad faith,

Court rejected fair use defense

25

VIRTUAL WORKS, INC. v. NETWORK

SOLUTIONS INC., VOLKSWAGEN OF

AMERICA, INC., 2000 U.S. Dist. LEXIS

2670 (E.D. Va.)

Court found VW.net is the intuitive

domain name of Volkswagen and that

Virtual Works had no trademark rights

in VW.

26

VIRTUAL WORKS, INC. v.

NETWORK S

• References to Volkswagen as Nazi using

slave labor disparaged Volkswagen

• Virtual Works had offered to sell the

domain name to Volkswagen

27

XEREAS V. HEISS., 933

F.Supp.2d 1 (D.D.C. 2013)

• Former business partner re-registered

plaintiff’s domain name in name of

former business

• Internet cyberpiracy constitutes per se

trademark dilution.

28

Gripe Sites – Mayflower Transit,

LLC v. Prince, 314 F. Supp. 2d 362

(D.N.J. 2004)

• Unhappy customer of moving company registered domain name

to detail bad moving experience

• Court found cyber-griper lacked requisite bad faith intent to profit

for ACPA claim

• Although clear bad faith intent to tarnish the Mayflower company

name, there was no evidence of intent to profit, but rather intent

to cause Mayflower to change its company performance

• Domain name registration to provide critical commentary not

cybersquatting

29

Limitation of Liability Under

ACPA • Bad faith described above shall not be found in any

case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful

• Person liable only if they are the domain name registrant or that registrant’s licensee

• Limitation of liability under Lanham Act for registrars, registries, or other domain name registration authorities absent bad faith, willfulness, or failure to comply with Court orders or procedures

30

Contributory Cybersquatting– Petroliam

Nasional Berhad v. GoDaddy.com, Inc., 737

F.3d 546 (9th Cir. 2013), cert. denied

• Trademark owner sued registrar of

cybersquatting domain names under

ACPA

• Ninth Circuit held ACPA does not create

claim for contributory cybersquatting

• But see Transamerica Corp. v. Moniker

Online Servs., LLC, 672 F. Supp. 2d

1353, 1364 (S.D. Fla. 2009) (plaintiff

stated claim for contributory

cybersquatting)

31

Relief under ACPA

• Allows courts to order the forfeiture,

cancellation or transfer of domain

name whether it was registered before,

on or after the effective date of the Act

• Also allows traditional remedy of an

injunction under section 34(a) of the

Lanham Act

32

Monetary relief under ACPA

• Monetary relief under section 35(a) of

the Lanham Act available,

• May elect to recover prior to trial,

instead of actual damages and profits,

an award of statutory damages ranging

from $1000 to $100,000 per domain

name, as the court considers just

• No damages if domain name registered

before November 29, 1999

33

Skydive Arizona, Inc. V.

Quattrocchi, 673 F.3d

1105 (9th Cir. 2012)

Affirmed jury award of $600,000 for

statutory damages under ACPA -

$100,000 per domain name (maximum).

Note: Jury also awarded $1 million for

false advertising and $2.5 in lost profits.

34

Newport News Holdings Corp. v.

Virtual City Vision, Inc., 650 F.3d 423

(4th Cir. 2011)

• Affirmed district court award of attorneys’

fees – defendant’s conduct was exceptional

because after being notified of plaintiff’s

rights in domain name it tried to

commercialize its use.

• Also awarded $80,000 in statutory damages

for “egregious and exceptional” conduct

35

In Rem Provision Under ACPA

Act authorizes in rem civil actions

against the domain name itself in

the judicial district in which the

domain name registrar, registry, or

other domain name authority that

registered or assigned the domain

name is located

36

Requirements For In Rem

• The domain name violates any right of the owner of

a mark registered in the PTO, or protected under

sections 43(a), (c) or (d) of the Lanham Act, and

• The court finds that the owner: • Is not able to obtain in personam jurisdiction, or

• Through due diligence was not able to find person by • Sending a notice of the alleged violation and intent to proceed

under this section to the registrant of the domain name at the

postal and e-mail address provided by the registrant to the

registrar, and

• Publishing notice of this action as the court may direct promptly

after filing the action

37

CAESARS WORLD, INC. v.

CAESARS-PALACE.COM, 2000

U.S. Dist. LEXIS 2671 (E.D. Va.)

Plaintiff is not required to “prove its case”

prior to filing an in rem action.

38

In Rem Relief Restriction

Remedies for in rem action

limited to forfeiture, cancellation

or transfer of domain name to

the owner of the mark

(Volkswagen, AG v. Volkswagentalk.com,

584 F. Supp. 2d 879

(E.D. Va. 2008))

39

Harrods, Ltd. v. Sixty Internet

Domain Names, 302 F.3d 214

(4th Cir. 2002)

A claim may be brought for

cybersquatting invoking in rem

jurisdiction under other provisions of the

Trademark Act for infringement, false

designation of origin, or dilution.

40

LUCENT TECHNOLOGIES INC.

v. LUCENTSUCKS.COM,

2000 WL 554567 (E.D. Va.)

• First in rem case filed under ACPA

• LUCENTSUCKS.COM was linked to a porn site • Server subsequently removed link

• In granting a motion to dismiss, court found

that filing in rem action 8 days after sending

notice of intent to proceed by e-mail and U.S.

mail to the registrant is not due diligence

41

Continental Airlines, Inc. v.

continentalairlines.com,

390 F. Supp. 2d 501

(E.D. Va. 2005)

A court may waive the publication requirement

when the plaintiff proved that the domain

name registrant had actual notice of the

lawsuit.

42

Agri-Supply Co. v. Agrisupply.com,

457 F. Supp. 2d 660 (E.D. Va.

2006)

Default judgment in an in rem action,

plaintiff may recover actual damages,

costs, and attorneys’ fees in exceptional

cases.

43

Protection of an

Individual’s Name

There is a U.S. statute, 15 U.S.C. § 8131, that

creates liability for registration of a domain

name without consent after November 29,

1999, that is another living individual’s name,

or one substantially and confusingly similar to

it, and with the specific intent to profit from

such name by selling the domain name for

financial gain to that person or a third party

44

Protection of Individual’s Name

• Discretionary award of costs and fees to the

prevailing party under this provision

• Exception to liability for a name used in,

affiliated with, or related to a work of

authorship under the Copyright Act and if the

person registering the domain name is the

copyright holder or licensee of the work

45

Protection of Individual’s Name • If, however, a domain name that is

registered before this date is later re-

registered by a new entity, some courts will

apply the Act.

• Compare Schmidheiny v. Weber, 319 F.3d

581 (3d Cir. 2003) (applying the Act to a re-

registration), with GoPets Ltd. v. Hise, 657

F.3d 1024 (9th Cir. 2011) (declining to apply

the Act to a re-registration).

46

III. Uniform Domain Name Dispute Policy (UDRP)

47

UDRP Historical Background • Core task of ICANN was to address ”The Trademark

Dilemma,” the fraudulent use of trademarks as domain names.

• ICANN commissioned the United Nations World Intellectual Property Organisation (WIPO) to produce a report on the issue.

• WIPO Report recommended a “mandatory administrative procedure concerning abusive registrations.”

• UDRP launched December 1, 1999.

• Contractual. UDRP is incorporated by reference into your Registration Agreement.

48

UDRP Service Providers

• Asian Domain Name Dispute Resolution Centre

• National Arbitration Forum

• WIPO

• The Czech Arbitration Court Arbitration Center for Internet Disputes

• Arab Center for Domain Name Dispute Resolution (ACDR)

49

UDRP Fees

• Set by Provider.

• WIPO • Between 1 and 5 domain names, $1,500 for single panelist

and $4,000 for 3 panelists. Between 6 and 10 domain names, $2,000 for single panelist and $5,000 for 3 panelists.

• Forum • Between 1 and 2 domain names, $1,300 for single panelist

and $2,600 for 3 panelists. Between 3 and 5 domain names, $1,450 for single panelist and $2,900 for 3 panelists. Between 6 and 10 domain names, $1,800 for single panelist and $3,600 for 3 panelists. Between 11 and 15 domain names, $2,250 for single panelist and $4,500 for 3 panelists.

50

UDRP Model Complaint and Filing Guidelines

• Providers have Provider-specific supplemental rules.

• Providers have model complaints and ability to file online.

51

UDRP: Elements of Claim [UDRP, 4(a)]

1) The domain name is identical or confusingly similar to a Complainant’s trademark or service mark;

2) Respondent has no rights or legitimate interests in domain name; and

3) The domain name was registered and is being used in bad faith. a) Most difficult element. Must show both bad faith

registration and use. b) UDRP sets forth a list of nonexclusive factors for a

finding of bad faith. See ICANN, Uniform Domain Name Dispute Resolution Policy, Art. 4(b).

52

UDRP Defenses to Claim [UDRP, 4(c)-(d)]

• before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

• you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; -or-

• you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

53

UDRP Administrative Timeline [UDRP Rules, 4(a)-(b)]

• Provider submits verification request to Registrar.

• Registrar required to lock domain within 2 calendar days of receiving Provider’s verification request.

• Provider conducts administrative review within 3 calendar days of receipt of fees.

• If in compliance, Provider forwards complaint to Registrar and Respondent. If not in compliance, Provider forwards to back to Complainant who has 5 calendar days to correct deficiencies.

54

UDRP Administrative Timeline [UDRP Rules, 5]

• Respondent has 20 calendar days from commencement of proceeding to file a response.

• There is no express limit for extensions upon request from Respondent or approved stipulation of the parties.

• There is no express limit on response.

55

UDRP Examination [UDRP, 4(e); UDRP Rules, 3(b)(iv), 5(b)(iv)-(v), 5(c), 6]

• One panelist, selected by the Provider, -or-

• Three-member panel, at the option of the Complainant or Respondent. • If requested by Complainant, each party submits a list of

3 candidates to serve as 1 member of panel. One member chosen by Complainant, one by Respondent, one by Provider.

• If requested by Respondent, Respondent shares fees.

56

UDRP Standard of Proof [UDRP Rule 15(b)]

• Each element by preponderance.

• Decided on the basis of the statements and documents submitted and in accordance with UDRP, Rules, and any rules and principles of law deemed applicable.

57

UDRP Decision [UDRP Rule 15(b)]

• Within 14 days of the panel’s appointment.

58

UDRP Remedies

• Cancellation of the domain name -or- transfer of the domain name registration to the Complainant.

• Status quo maintained until conclusion of proceeding and cancellation or transfer order is received from Respondent, court or arbitral tribunal, or UDRP panel.

59

UDRP Appeal or Other Proceedings [UDRP 4(k)] • Respondent or Complainant may submit the

dispute to a court of competent jurisdiction before or after proceeding is concluded.

60

Weaknesses

• No guarantee that a ruling will be a final determination of rights.

• Damages and injunctions not available.

• Rulings can be unpredictable and inconsistent and can sometimes wholly disregard the law.

• NSK LTD. v. Li Shuo, FA170100 1712449 (Forum February 16, 2017) ()[combined mark case; panel departs from the usual determination that a disputed domain name incorporating the complainant’s mark as a whole will suffice to demonstrate confusing similarity]

• Julia Fiona Roberts v. Russell Boyd, Case No. D2000-1210 (WIPO May 29, 2000) (finding common law service mark rights in a personal name) versus Reverend Dr. Jerry Falwell v. Gary Cohn, Case No. D2002-0184) (WIPO June 3, 2002) (finding no such rights).

61

IV. Custom Policies

• Sunrise Dispute Resolution Policy (SDRP)

• Registration Eligibility Dispute Resolution Policy (REDRP)

• Other Custom Policies • UDRP-F for Frogans

• Central Nic's CDRP

• .music copyright policy

• Reserved Names Challenge Policies for fTLDs

62

V. URS

The Uniform Rapid Suspension System

(URS) is a dispute resolution policy similar

to the UDRP, but intended to be speedier

and more cost-effective, and focused on the

more flagrant cybersquatting incidents.

63

URS

The system applies only to domain names

registered in new gTLDs launched after

January 1, 2013, though some country-code

TLDs may opt in.

https://www.icann.org/resources/pages/ur

s-2013-10-31-en

64

https://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-en

URS

Unlike the UDRP, however, the URS only

applies to marks that are registered,

validated through court proceedings, or

specifically protected by statute or treaty,

thereby eliminating protection for most

unregistered marks.

65

URS

The URS complaint is also more limited than

in a UDRP proceeding: the submissions

must be 500 words or fewer, inserted into

an online form, allowing little leeway for a

complainant to structure a complaint.

66

URS

The requirements to prevail in a URS proceeding are

similar to those in a UDRP action, protecting both

trademarks and service marks and considering

whether: (1) the registered domain name is identical

or confusingly similar to the complainant’s mark, (2)

the registrant has no legitimate right or interest in the

domain name, and (3) the domain was registered and

is being used in bad faith. See Rule 1, URS

Procedures (Mar. 1, 2013).

67

URS

The URS proceedings do require a higher

evidentiary burden: clear and convincing

evidence, instead of the preponderance of

the evidence standard in UDRP

proceedings.

68

URS

Three service providers are empowered to hear

URS disputes:

1. Forum;

2. the Asian Domain Name Dispute Resolution

Centre; and

3. MFSD Srl.

69

URS

The URS is designed to obtain a decision in

around 20 days for a $375 fee, as

compared with 45 days for approximately

$1,500 for a UDRP decision.

70

Impact of URS proceeding

Losing a URS proceeding does not preclude

seeking a remedy through the UDRP or

ACPA. See Rule 13, URS Procedures (Mar.

1, 2013).

71

Appealing a URS decision

A losing party may choose to appeal an

examiner’s decision in a URS proceeding,

but must file the appeal within 14 days of

the original decision. See Rule 12, URS

Procedures (Mar. 1, 2013).

72

URS Decisions

• The first filing was made by Facebook,

which sought removal of “facebok.pw.”

• Despite the heavier evidentiary burden,

Facebook easily secured suspension.

• Facebook Inc. v. Radoslav, NAF Case No.

FA1308001515825 (Sept. 27, 2013)

73

Six Continents Hotels, Inc. v. Beyond

the Dot LTD, NAF Case No. FA

1578896 (Sept. 29, 2014)

Suspending “holidayinn.tokyo” because it

was confusingly similar to the

complainant’s HOLIDAY INN trademark

74

Navistar Int’l Corp. v. VistaPrint

Techs. Ltd., NAF Case No.

FA1410001586755 (Dec. 15, 2014) • domain name

• Confusingly similar when respondent added “t”

• WHOIS record supplied evidence that Respondent

not commonly known by the domain name, and

thus no rights or legitimate interest

• Use of domain name to resolve to a page that

promotes itself evidence of bad faith

• Also, evidence that Respondent attempted to pass

itself off as Complainant’s CFO to commit wire fraud

75

Challenges in Showing “Clear

and Convincing” Bad Faith • Little to no analysis provided in decisions.

• Milhaus Development LLC v. Contact

Privacy Inc., NAF Case No.

FA1608001690633 (Sept. 8, 2016):

Despite Respondent’s default, bad faith

was not “clear and convincing.”

• ARCELORMITTAL v. Cameron Jackson,

NAF Case No. FA1608001690435 (Sept.

8, 2016) (same)

76

Owner of Trademark Must

Match

• Wolfram Research, Inc. v. Andrew Davis

et al., NAF Case No.

FA1404001553139 (April 12, 2014):

WOLFRAM trademark in name of

“Wolfram Group LLC” and not

complainant, so no right in the domain

name wolfram.ceo.

77

URS - Potential Inconsistencies

• Two claims filed on behalf of Sketchers’ regarding

, both against respondent Williams

• First decision, suspension denied, Examiner claimed that

complainant “did not submit one single argument to

demonstrate why he considers that the Registrant does not

have legitimate right or interest to the domain name.” NAF

Case No. FA1503001609616 (Apr. 5, 2015)

78

URS - Potential Inconsistencies

• Second decision, same claim, but

Examiner found Sketchers established all

three elements. Bad faith implied based

on fact SKX mark submitted to Trademark

Clearing House. NAF Case No.

FA1504001614750 (May 5, 2015)

79

VI. Monitoring for Infringements

• Watch services

• Conducting sweeps

80

Trademark Clearinghouse

The Trademark Clearinghouse is a

centralized database provided by ICANN,

which automatically connects to each newly

launched gTLD.

http://www.trademark-

clearinghouse.com/content/what-

trademark-clearinghouse

81

http://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse

Trademark Clearinghouse

The Clearinghouse functions as a

centralized watch service for trademark

owners registered with the

Clearinghouse. It does not prevent or

block someone from registering a domain

name including a trademark, it merely

notifies the registrant of the registration

or pending application for registration.

82

VII. Options Once Infringing

Domain Name Identified

Once a trademark owner becomes aware of

a cybersquatter, there are various options

available: (1) do nothing; (2) monitor the

use to see if a problem develops or persists;

(3) send a cease and desist letter; (4)

institute a UDRP or URS proceeding; or (5)

institute a suit in federal court alleging a

violation of the ACPA.

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Which Dispute Option to Choose?

The UDRP and URS do not offer any

injunctive or monetary relief or an award of

attorneys’ fees or costs, nor can they

consider other issues between the parties.

The URS only applies to relatively new

gTLDs.

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ACPA Option

If the trademark owner needs to stop the

use of the domain name immediately and

can get jurisdiction, it should consider

bringing an ACPA claim in federal court and

seek a temporary restraining order.

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UDRP

The greatest problem with the UDRP is

inconsistent panel decisions based on the

application of differing, or no clear

substantive, law, as well as no direct

appellate review of panel decisions (just the

option of initiating a court proceeding)

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URS

Is suspension of the domain name enough?

• Suspension lasts for the remaining

balance of the registration period on the

domain name

• If transfer better, go with UDRP.

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ACPA comparison to UDRP/URS

• The requirement of establishing the bad-faith

use and registration of the domain name in

the UDRP/URS is more restrictive than the

standard under the ACPA in which bad-faith

registration can be the basis for a cause of

action.

• Under the ACPA, unlike the UDRP/URS, one

must show that the defendant used,

registered, or trafficked in the domain name

with a bad-faith intent to profit from the

mark.

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UDRP and URS

• Apart from the benefit of a temporary

restraining order, however, a UDRP or URS

proceeding usually is much faster than a

federal case instituted under the ACPA.

• Once a panelist has been chosen in a WIPO

UDRP proceeding, a decision will be issued

within 14 days, for an average total time of

approximately six weeks. A URS panel will

release a decision in approximately three

weeks.

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Enforcement Options

For parties that want to deal with

straightforward cases of cybersquatting,

and have no desire to seek monetary relief

or stop the infringing use of a mark on a

website, the UDRP or URS is the better

forum.

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Jonathan protects brands, copyrighted works and domain names throughout

the world. As part of his practice, Jonathan represents plaintiffs and

defendants in a wide variety of disputes involving trademark, copyright, trade

secret, right of publicity, breach of contract, unfair competition and false

advertising claims. As an Adjunct Professor at Northwestern University School

of Law, he teaches the course on trademarks and unfair competition law,

while at The John Marshall Law School, he teaches a course on right of

publicity and privacy law. He also serves as Pro Bono General Counsel for the

Chicago Bar Association. A trained mediator, he was selected by the District

Court for the Northern District of Illinois to be on its list of Lanham Act

Neutrals for its trademark mediation program.

Jonathan has co-authored a one-volume treatise entitled "Trademarks and

Unfair Competition: Critical Issues in the Law" that is published by Law

Journal Press of New York, the Illinois chapter of the International Trademark

Association's U.S. State Trademark and Unfair Competition Law, as well as a

chapter on "Domain Names and Trademarks On the Internet" for "The

Intellectual Property Handbook: A Practical Guide for Franchise, Business

and IP Counsel."

Jonathan S. Jennings

jsj@pattishall.com

Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

200 South Wacker Drive, Suite 2900

Chicago, IL 60606

312-554-7937

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Debra has been named a Tech Titan by the San Antonio Business Journal and a VIP Geek by Geekdom. WOAI radio has called her one of the top Internet and cyber lawyers in the state of Texas. She maintains a diverse transactional and litigation practice for emerging companies in the technology and Internet-related industries, and she uses her tech acumen to assist non-tech clients navigate the complex, new-world legal issues presented by emerging technologies. She is a frequent writer and presenter on the intersection of technology and the law. Prior to her legal career, she was a professor at St. Mary’s University.

Debra L. Innocenti-Placette

debra@innocentijones.com 110 E. Houston Street, 8th Flr San Antonio, Texas 78205 210.816.5714

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mailto:debra@innocentijones.com