URS, UDRP, ACPA and Beyond: Domain Name

Enforcement in the New gTLD EraStrategies for Brand Protection, Leveraging Recent Decisions, Weighing the Pros and Cons

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TUESDAY, JUNE 26, 2018

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

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 .intand .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 nameinto 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 registryis 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

General Data Protection Regulation (GDPR) Issues• ICANN is working to make the Domain Name System (DNS)

and WHOIS, the master database of who owns what website name, compliant with the European Union’s GDPR. On May 17, 2018, it passed a Temporary Specification for gTLD Registration Data.

• EPAG, a Germany-based, ICANN-accredited registrar that is part of the Tucows Group, has refused to provide administrative and contact data to ICANN pursuant to the GDPR.

• ICANN has filed suit against EPAG.

II. Anticybersquatting

Consumer Protection Act

15

• Federal Court Relief

• Added measure to address jurisdictional

challenges

Cause of Action

ACPA creates 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

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

17

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

18

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

19

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

20

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

21

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

22

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.

23

VIRTUAL WORKS, INC. v.

NETWORK SOLUTIONS

• References to Volkswagen as Nazi using

slave labor disparaged Volkswagen

• Virtual Works had offered to sell the

domain name to Volkswagen

24

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

25

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

26

Gripe Sites – Mayflower Transit,

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

(D.N.J. 2004)

• Unhappy customer of moving company registered domain name

<mayflowervanlinebeware.com> to detail bad moving experience

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

for ACPA claim

27

Gripe Sites – Mayflower Transit,

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

(D.N.J. 2004)

• 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

28

Gripe Sites – McAllister Olivarius

v. Mermel, 298 F. Supp. 3d 661,

671 (S.D.N.Y. 2018)

• Unlike adding “sucks” to a domain name, other terms do not

necessarily signal a gripe site

• The word “truth” added by ex-client to a domain name

incorporating the law firm’s name is not “self-evidently intended

as criticism”

29

Limitation of Liability Under

ACPA

• 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

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.

• This exception is construed narrowly as acting even in partial bad faith takes one out of this safe harbor. McAllister Olivarius v. Mermel, 298 F. Supp. 3d 661, 675-676 (S.D.N.Y. 2018)(citations omitted).

31

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 <petronastower.net>

<petronastowers.net>

• 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)

32

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

33

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

34

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.

35

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.

36

In Rem Provision Under ACPA

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.

37

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

38

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.

39

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).

40

In Rem Relief

Attorneys’ fees may be awarded in

exceptional cases. Agri-Supply Co. v.

Agrisupply.com, 457 F. Supp. 2d 660

(E.D. Va. 2006).

41

Harrods, Ltd. v. Sixty Internet

Domain Names, 302 F.3d 214,

227-228 (4th Cir. 2002)

A claim also may be brought for

cybersquatting invoking in rem jurisdiction

under other provisions of the Trademark

Act (apart from the provisions governed by

15 U.S.C. §1125(d)(1)) for infringement,

false designation of origin, or dilution.

42

IN REM JURISDICTION

ISSUES

• Registration of a domain name with a registrar in a U.S.

state not enough in itself to establish personal jurisdiction.

• Ukrainian defendant properly served by mail and e-mail via

information listed with registrar as well as through notice

publication ordered by court pursuant to ACPA in rem

provision. ICON Health & Fitness, Inc. v. PRO-FORM.COM,

2017 WL 4797794 at *7-8 (D. Ariz. Sept. 12, 2017) (this

magistrate’s decision was subsequently adopted by the

District Court).

43

In Rem Publication Requirement

A court may waive the publication requirement

when the plaintiff proved that the domain

name registrant had actual notice of the

lawsuit. Continental Airlines, Inc. v.

continentalairlines.com, 390 F. Supp. 2d 501

(E.D. Va. 2005).

44

ACPA Protection of Personal

Names Used as Trademarks

• Famous bicycle racer Greg LeMond obtained

preliminary injunction under ACPA against

infringing domain names. LeMond v.

Stinchfield, 2017 WL 3491837 (D. Minn.

August 14, 2017).

• LeMond had obtained trademark registration

in LEMOND for bicycles and related goods.

45

Protection of an Individual’s Name

(not necessarily used as mark)

There is a U.S. statute, 15 U.S.C. § 8131, that is not

part of the Lanham Act, which 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.

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

• The Forum (f/k/a National Arbitration Forum)

• World Intellectual Property Organization (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

GDPR Issues

• Pursuant to ICANN’s Temporary Specification, UDRP providers are accepting complaints, even if Complainant does not have the contact information for the Respondent.

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).

53

Bad Faith

• One way for a trademark owner to prove the "bad faith" element is to provide evidence that the domain name registrant has engaged in a "pattern of such conduct.“

• Unknown whether issues with GDPR and WHOIS will prevent such conduct claims in the future.

Recent Noteworthy Cases

• Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Tony Mak, D2018-0602 (WIPO May 17, 2018): Website content may support a finding of confusing similarity.

• Rolyn Companies Inc. v. Mediablue Inc., D2018-0072 (WIPO April 4, 2018): Complainant had the same opportunity as Respondent to acquire the domain in a public auction and, although rare, there are other businesses with that name.

• Delbert R. Terrill Jr. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org), FA1803001775784 (Forum April 2, 2018): Complainant didn’t establish that the unregistered acronym for its business name functioned as a trademark.

• CSP International Fashion Group S.p.A. v. Domain Administrator, NameFind LLC, D2018-0163 (WIPO March 13, 2018): Absent establishing bad faith, Complainant could not prevail over Respondent for attempting to sell domain name for “excessive” amount.

• Autobuses de Oriente ADO, S.A. de C.V. v. Private Registration / Francois Carrillo, D2017-1661 (WIPO February 1, 2018): Bad faith established based on Respondent purchasing domain name with “willful blindness” of Complainant’s trademarks.

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.

56

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.

57

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.

58

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.

59

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.

60

UDRP Decision [UDRP Rule 15(b)]

• Within 14 days of the panel’s appointment.

61

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.

62

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.

63

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) (<skfnsk.com>)[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) versusReverend Dr. Jerry Falwell v. Gary Cohn, Case No. D2002-0184) (WIPO June 3, 2002) (finding no such rights).

64

UDRP : By the Numbers

• Filings (2018): For WIPO, twice the number of rights holders filed complaints under the UDRP versus the same period for URS

• Case outcomes (2018): For WIPO, UDRP (1% Cancellation; 93% Transfer; 6% Denied)

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

66

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.

67

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

68

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.

69

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.

70

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).

71

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.

72

URS

Three service providers are empowered to hear

URS disputes:

1. Forum;

2. the Asian Domain Name Dispute Resolution

Centre; and

3. MFSD Srl.

These service providers also have their own

supplemental URS rules.

73

URS

The URS is designed to obtain a decision in

around 20 days for a $375 fee (fees vary

slightly by provider, this is for the Forum), as

compared with 45 days for approximately

$1,500 for a UDRP decision.

74

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).

75

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).

76

URS Decisions

• The first filing was made by Facebook,

which sought removal of “facebok.pw.”

Facebook Inc. v. Radoslav,

FA1308001515825 (Sept. 27, 2013).

• Despite the heavier evidentiary burden,

Facebook easily secured suspension.

77

URS DECISIONS

Suspending “holidayinn.tokyo” because it

was confusingly similar to the

complainant’s HOLIDAY INN trademark.

Six Continents Hotels, Inc. v. Beyond the

Dot LTD, FA 1409001578896 (Sept. 29,

2014).

78

URS DECISIONS

• <navisttar.com> domain name confusingly similar

because respondent merely added an extra “t”.

Navistar Int’l Corp. v. VistaPrint Techs. Ltd.,

FA1410001586755 (Dec. 15, 2014).

• 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

79

URS - Occasional Challenges in

Showing “Clear and Convincing”

Bad Faith

• Despite Respondent’s default, bad faith

was not “clear and convincing.” Milhaus

Development LLC v. Contact Privacy Inc.,

FA1608001690633 (Sept. 8, 2016).

• ARCELORMITTAL v. Cameron Jackson,

FA1608001690435 (Sept. 8, 2016)

(same).

80

URS - Owner of Trademark and

Complainant’s Name Must

Match

WOLFRAM trademark in name of

“Wolfram Group LLC” and not

complainant, so no right to assert against

the domain name <wolfram.ceo>.

Wolfram Research, Inc. v. Andrew Davis

et al., FA1404001553139 (April 12,

2014).

81

URS – Marks with Graphical

Elements

“URS procedure does not specifically

exclude trademarks which are combined

[sic] of a word and a graphical element,

provided the word element is clear as well

as sufficiently distinct and separate from

the graphical element.” Reima Oy v. Doe,

D99DCA22 (March 26, 2018).

82

URS – Abusive Filings

• A safeguard against abusive filings or those

based on material falsehoods.

• Abuse not commonly found, even where

complainant alleged no marks that matched

or were similar to the domain names at

issue. See, e.g., FIBO Consulting, Ltd. v.

Whois Privacy Corp., FA 1802001772404

(March 6, 2018).

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VI. Monitoring for Infringements

• Watch services

• Conducting sweeps

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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

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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.

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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, domain name,

copyright, trade secret, right of publicity, breach of contract, unfair

competition and false advertising claims. He also handles prosecution and

licensing matters. As an Adjunct Professor at Northwestern University School

of Law, he previously taught the course on trademarks and unfair

competition law, while at The John Marshall Law School, he now teaches a

course on right of publicity and privacy law.

Jonathan regularly speaks on domain name and trademark topics. He also

authored a book chapter entitled "Domain Names and Trademarks On the

Internet" for The Intellectual Property Handbook: A Practical Guide for

Franchise, Business and IP Counsel published in 2017, and an article

entitled "Developing Domain Name Enforcement Options" for the Franchise

Law Journal.

Jonathan S. Jennings

jsj@pattishall.com

Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

200 South Wacker Drive, Suite 2900

Chicago, IL 60606

312-554-7937

www.pattishall.com

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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.com110 E. Houston Street, 8th FlrSan Antonio, Texas 78205210.816.5714

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