Enforcement

Sometimes Doing Nothing Means Everything

 

shutterstock_193547663I’ve won many UDRP cases where the disputed domain name fails to resolve to any website or other content. This is often called “passive holding” and it can give visitors who type in that domain the wrong impression that a brand owner has either gone out of business or has at least failed to give sufficient attention to the online component of its marketing efforts.

In the recent case of Chevron Intellectual Property LLC v. Ancelet Dept / Ancelet, NAF Claim No. FA 1582869 (2014) the Respondent registered 16 domains that incorporate the famous CHEVRON fuel trademarks such as <vouchercertificatesforchevronfuel.com> and <chevronrewardsusa.com>. Upon receiving the complaint the Respondent replied that he runs a small business that generates leads for affiliate networks through e-mails. He also mentioned that the disputed domains were created automatically by software that chooses domains that may be related to a particular campaign.  None of the domains resolve to a website or any other content.

In its decision, the Panel addressed each of the three UDRP component in-turn. However, what I found to be the most interesting comment on confusing similarity was tucked into the discussion of bad faith.  The Panel said “the more distinctive the earlier mark the greater would be the likelihood of confusion.”  This is basic trademark law but its appearance in a UDRP decision should give the owners of famous and distinctive brands reassurance that their strong trademarks will be protected against cybersquatted domains.

Next, the issue of whether the Respondent had any rights or legitimate interest in the domains was discussed.  This is where the passive holding line of attack came into play.  In relation to the Respondent’s non-resolving domain names, the Panel held that “the inactive holding of Internet domain names did not create a viable right or legitimate interest of a domain name because it constituted neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”

Finally, in relation to the third component of the UDRP, the Panel noted that a domain owner’s expressed intention to seek affiliate revenue or set up pay-per-click sites “may be a legitimate commercial business and is not, in itself, evidence of bad faith.”  However, she went back to the passive holding argument and found that the “Respondent’s failure to develop a website does not bar a finding of bad faith because by failing to use the domain names in a reasonable time Respondent’s registration of confusingly similar domain names can be construed as having been in bad faith with an intent to sit on and avoid using those domain names in bad faith.”  She then cited a case in which non-use of a domain for a period of three months was held to be sufficient to prove bad faith.  Support of this specific time-frame should prove useful and I plan to cite this decision in future complaints.

The end result is that all sixteen domains were ordered to be transferred to the Complainant. The Respondent was then left with a lesson on why the unsupervised use of automated software to register non-resolving domains that infringe on famous trademarks can be a costly mistake and is no way to run a small business.

Social Media

Social Media Branding Protection 101

In the last decade, social media has become a ubiquitous part of our everyday lives, here in the U.S. and in most parts of the world.

Over 2 billion people are now actively using social media each month, a staggering number given that a decade ago, social media sites like Friendster and MySpace were only celebrating having mere millions of users.

As the number of social media platforms and users continues to grow, social media branding protection needs for businesses exponentially grows with it.

From Melbourne to Memphis to Mumbai, businesses are asking themselves “How can we stay on top of the latest trends to ensure that we’re meeting our brand protection and brand promotion goals?”

Monitoring the social media landscape and keeping your trademarks safe requires having a plan, especially for legal teams tasked with social media branding protection.

The 2 Keys to Social Media Branding Protection Success

  1. Register Important, Available Social Media Usernames

Given the disparity of trademark protection policies amongst social media platforms ensuring your companies’ social media branding protection success is different than how you approach domain name protection.

Unlike with domain names, there is no whois database for social media platforms and no established legal recourse for recovering infringing social media usernames.

However, the biggest difference between domain names and social media is that social media is almost always free to register. A difference that can easily be turned into a positive for businesses’ social media branding protection efforts.

While the lack of cost makes social media an attractive space for those who wish to infringe on brands and trademarks, it also makes it easy to protect brands and trademarks as long as you are on the lookout for the new platforms that crop up. If you hear of a new social media platform, it is advisable to snap up key usernames for your brand if available.

The cost is virtually non-existent, and you may save yourself the headache of dealing with a potential social squatter down the road.

  1. Go After Only Those Social Media Usernames that Matter

If infringements to your brand do exist on a social media platform that necessitate recovery, it must be done so tactfully and tactically.

This applies not only for the manner in which you deal with a social squatter, but which targets you go after for enforcement. Your business can not realistically go after all infringements, so it’s important to understand how to determine which infringements you will have the most ROI from winning.

Your top priorities for enforcement should include social media usernames that are being used for:

  • counterfeit goods
  • identity theft
  • phishing

Beyond those criteria, infringements should be monitored and selectively dealt with based on brand protection needs.

An Example of a Social Media Branding Infringement You Shouldn’t Recover

Take the Instagram handle, “ChipotleinUSA” – clearly a fraudulent handle offering 50,000 people a $60 voucher apiece.

Yet it has not been taken down, and as of writing has nearly 60,000 followers. Why? Simply put, it does not necessarily cause direct harm to Chipotle (other than leaving a few fans slightly hungrier).

Chipotle

The social media landscape is too vast and too rapidly evolving to remain hung up on a particular platform or series of infringements.

The best approach is to:

  • Selectively remove harmful infringements via the existing policies of different platforms
  • Quickly grab key brand names and trademarks as new social media platforms emerge

By executing on these two social media branding protection items, tackling the problem of social squatting can become less of a headache.

 

ICANN

State of the Net for the Week of November 17

ICANN 51 wrapped up without any concrete steps towards resolution on the release of two-character second-level domains (SLD) in new generic top-level domains (gTLDs) – for example, permutations such as <fw.FAIRWINDS>, where “fw” is the SLD and “FAIRWINDS” is the gTLD. However, last week, ICANN announced that gTLD owners will no longer be required to reserve certain two-character SLDs (those containing a letter and a number or two numbers) and that there will soon be a clear, simplified, efficient process for all gTLDs to release two-letter domain names. With the current draft of the simplified process, applicants can expect to:

  1. Submit a request to ICANN to release one or more letter/letter two-character labels,
  2. Have their request reviewed by ICANN, after which it will be posted for a 30-day comment period (ICANN will also notify the Governmental Advisory Committee of the request and comment period), and finally,
  3. Be able to release their two-character domains if there are no “relevant and reasoned objections to the request”

ICANN also announced that owners of new gTLDs that have already completed the existing process for releasing SLDs (Registry Services Evaluation Policy, or RSEP) and had their request for the release of two-character SLDs up for a 30-day public comment period should be able to make two-character SLDs available (for use or sale) by December 1.

How does this affect brands in general?  Whether or not a brand is an applicant, the release of two-character second level domains can impact the trademark protection efforts of those companies whose brands are or can be shortened to two-characters. So, companies should consider registering any two-character domain names that could be:

  • valuable for promoting their brand, or
  • too risky to leave for others to register
Enforcement

Watch Collector Gets His Clock Cleaned in UDRP

shutterstock_111171971

When I think about receiving a UDRP complaint I recognize that there are some valiant causes to be defended and many hopeless cases to be conceded.  Confusing the two can be rather expensive for a respondent, as was the case here.

The Two Sides of the UDRP Complaint

The matter started out routinely enough in relation to the domain Glashuette-original.watch.  A demand letter was sent to the Respondent by The Swatch Group, owner of the nearly 90 year old GLASHUETTE ORIGINAL brand for luxury wristwatches.  A reply email was soon received from the Respondent’s lawyer in Hong Kong explaining that his client would happily transfer the domain in exchange for a particular model wristwatch from the brand owner.  This model retails for US$29,000.  There was some further correspondence between the parties during which the Respondent’s counsel repeatedly explained that his client “is prepared to consider anything but not money” in what seemed to be an attempt to avoid triggering section 4(b)(i), seeking “valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Finally, Respondent asked for payment of a few hundred dollars plus a donation of $30,000 to certain charities.  Swatch explained that it already donates considerable sums to charities of its own choosing and gave the Respondent a short deadline to transfer the domain or face a UDRP complaint.

The complaint was filed in due course and, in its response, the Respondent’s counsel submitted an extensive dissertation (with about one hundred pages of attached exhibits) on how its settlement requests were quite reasonable since the Respondent is a collector of fine things such as watches and domain names.  He went to great lengths to make the point that Swatch didn’t obtain this domain during the sunrise period and so the Respondent was entitled to assume that it was appropriate to register the domain himself (although it resolves to a pay-per-click website with links to various competitors in the wristwatch industry).

The UDRP Decision

In its rather brief decision, the Panel characterized this defense as “wholly misguided” and found “Respondent’s story as to why he registered the domain name unconvincing.” To the contrary, his offer to transfer the domain in return for a watch valued at US$29,000 is evidence of his intent to profit from the domain. Even his request for $900 was far in excess of Respondent’s likely out-of-pocket expenses incurred in registering the domain name.

So the lessons from this case are:

  • First, if a client asks you to defend a UDRP claim first, make sure you’re familiar with UDRP precedent and not just the plain language of the Policy.
  • Second, when it is absolutely clear that your client is going to lose, regardless of how innocent he may claim to be, advise him of this fact and tell him to voluntarily transfer the domain.

If he insists on retaining you to fight an obviously losing battle, then either tell him to find another lawyer or, if you’re more like the Respondent’s counsel in this case, put in tons of irrelevant evidence and then send your client a bill that will hopefully make him think twice before he barrels ahead to register any further infringing domain names (oh, and then try to collect on that bill….)

ICANN

State of the Net for the Week of November 10

The Internet Engineering Task Force (IETF) 91 meeting is being held in Honolulu, Hawaii this week. The group works to create protocols that can be adopted to solve technical problems in the infrastructure of the Internet and as such, the IETF meetings focus more heavily on the technical side of the spectrum than the other meetings that brands may hear about in their interactions with the domain name space. The current meeting, for example, will cover topics such as secure inter-domain routing and IPv6 operations.

According to its mission statement, the IETF’s goal “is to make the Internet work better by producing high quality, relevant technical documents that influence the way people design, use, and manage the Internet.”

Where the IETF conference tackles what is perhaps more familiar material is in the category of Name Collisions.

When ICANN adopted the recommendation in the Name Collision Occurrence Management Framework that the .MAIL, .CORP and .HOME gTLDs should be indefinitely deferred from delegation, ICANN stated that it will collaborate with the IETF to permanently reserve these strings through an IETF process.

For Your Radar

Jan 21: Beyond the Dot 2015