Decisions: Adjudication Situation

Sometimes UDRP complaints come along that are obvious attempts at gaining control of a domain name to which the Complainant simply does not have rights. A complaint filed by Adjudicate Today Pty Limited against the domain Adjudicate.org.au, filed with the World Intellectual Property Organization (WIPO) against The Institute of Arbitrators and Mediators, is a clear example of this form of over-reaching.

Quite simply, the Complainant attempted to build a case against the Respondent based on mistruths and stretched allegations. First of all, the Complainant stated that its common law rights to the term “Adjudicate Today” should give it rights to the disputed domain name based on it being identical or confusingly similar.

Additionally, the Complainant claims that the site is being used to deliberately mislead customers searching for the Complainant’s services, despite the different names of the organizations. Finally, the Complainant questions the Respondent’s trading company’s status as a non-profit.

When a complaint like this is filed, the Panelist usually breaks down and sifts through the Complainant’s falsities comprehensively, and this case was no exception. The Panelist found that the Complainant failed to satisfy any of the three requirements for domain name transfer, and as a final blow, found the Complainant guilty of Reverse Domain Name Hijacking.

This complaint should be a lesson to brand owners that UDRP complaints are not a quick fix if one does not have a solid case and should not be used merely to gain negotiating leverage. UDRP Panelists have seen it all, and they are very rarely fooled by complaints without merit.

Trademark Timelines and Rights

The Trademark Clearinghouse (TMCH) is poised to open Tuesday of next week, which means that March 26 will be the first day that brands or their agents can register their trademarks with Deloitte’s system.  That’s the FIRST day, not the last.

In fact, there is no deadline for registering trademarks. The TMCH will accept registrations on a rolling basis, as trademark owners submit them. It is up to the trademark owner to decide when it will register, and this is a decision that should be driven by each trademark owner’s particular protection needs.

For example, if a company is concerned about its presence in Internationalized Domain Names (IDN) – in non-Latin scripts such as Cyrillic, Japanese, Arabic, or Hindi – they should plan to file their trademarks early because the IDNs will be delegated first.

Deloitte’s announcement this week indicates that, even if ICANN is able to meet the projected April 23 date for the first new gTLD delegations, the Sunrise periods for those gTLDs may not take place until late May. Thus, trademark owners should, for the most part, plan on registering their marks in the two months after March 26.

Other TMCH timeline changes made after vigorous debate with ICANN stakeholders:

Trademark Claims service extended from 60 to 90 days

The Trademark Claims Service (more detail here) alerts both the registrant and the registry when someone tries to buy a domain that is an “Identical Match” to a trademark found in the TMCH.

This notification system originally was set to run for 60 days after general registration opens in that gTLD. Registry Operators had the option to run it longer. Now, the notification system will be required to run for at least 90 days.

The Impact:

This change provides an extra 30-day cushion. The Trademark Claim Service is an alert system and does not block an attempted registration. So it might stop some registrants from registering “Identical Match” domain names, but it will do little more than slow down more determined cybersquatters.

Clearinghouse will accept previously abusive registrations

Each trademark owner can submit up  to 50 “domain labels” that were registered abusively in the past. For example, if FairWinds Partners filed a successful UDRP complaint to reclaim FairWWindsPartners.TLD, then it could submit “FairWWindsPartners” to the TMCH. The trademark owner has to prove that the “domain label” was registered abusively by showing a successful URDP complaint that resulted in a domain transfer to the trademark owner.

The Impact:

The TMCH will become the repository of more than just “identical matches,” at least for the purposes of the Claims service. Claims notices will be sent to the registrant and the rightful owner whenever there is any attempt to register “domain labels” as domain names. Again, the benefit of the Trademark Claims Service is limited, but it provides a broader scope of protection.

Each Sunrise period will be preceded by a 30-day notice

The Sunrise period will allow trademark owners to register domains that are identical matches to their trademark before cybersquatters have the chance to register the domains. Now, 30 days before the Sunrise, gTLD Registry Operators will have to inform the public of the timing and rules of the Sunrise.

The Impact:

Trademark owners will have time to prepare to protect their marks with each wave of gTLD launches.

Food Fight

A few days after ICANN’s new gTLD Objection Filing period closed last Wednesday evening, the first objections are beginning to be made public. The first Legal Rights Objection posted by the World Intellectual Property Organization (WIPO), the designated dispute resolution provider for this type of objection, is over the application for .DELMONTE, Domain Incite reported late last week.

The Legal Rights Objection (LRO) is one of the provisions ICANN put in place in this new gTLD application round to protect trademark holders. The idea is that if an applicant applies for a new gTLD that infringes upon an organization’s existing trademark rights, then that organization can file an LRO to assert its rights. Ultimately, if the applicant has no demonstrable rights to the term, the application can be terminated. The LRO was one of the primary reasons ICANN could assure the trademark community that cybersquatting would not occur at the top level.

But what happens when two organizations have rights to the same mark?

The dispute over .DELMONTE raises interesting issues. The organization that applied for the gTLD is a subsidiary of Fresh Del Monte Produce, Inc., and the objector is Del Monte Corporation. Here in the U.S., we know and recognize Del Monte Corporation as the producers of canned fruits and vegetables, and as the parent company of a handful of other well-known brands. Fresh Del Monte Produce, Inc. makes similar products, but primarily markets them outside of the U.S. and South America. If you visit Del Monte Corporation’s corporate site at DelMonteFoods.com, you’ll notice a disclaimer at the bottom that reads, “Del Monte Foods is not affiliated with Fresh Del Monte Produce, Inc., Del Monte International or their subsidiaries or affiliates. ©Del Monte Corporation.” This is because Del Monte Corporation spun off Fresh Del Monte Produce, Inc. in 1989. Now Fresh Del Monte Produce, Inc. uses the Del Monte mark under a licensing agreement.

Undoubtedly, this licensing agreement will come into play during the dispute resolution over this objection. If it turns out that Del Monte Corporation holds the trademark rights to “Del Monte” and Fresh Del Monte Produce, Inc. does not own separate rights, then we could see the .DELMONTE application tossed out.

Then again, there’s always another option: cooperation. If the two Del Monte’s have coexisted for the past 24 years, both in the global marketplace and the online world, then perhaps there is an opportunity to share the use of the .DELMOTE gTLD. So far, the .DELMONTE objection is the only one that WIPO has posted on its site, but you can bet there will be more published over the coming days and weeks.

Trademarks and Strategies – The Need for Cooperation

A major theme to come out of INTA’s 2013 Trademarks and the Changing Internet Landscape Conference in New York City was the value of cooperation between legal and marketing departments in the development and execution of a company’s digital strategies.

Yahoo!’s J. Scott Evans spoke of the benefits of looping in the right decision makers, so that one person isn’t taking on the whole risk and responsibility of trademark portfolio management. Marketing as well as legal departments should take ownership of a strategic campaign and its implementation.

Chris George, of the Intel Corporation, pointed out that business development and PR should also be in the loop on legal’s social media enforcement strategies, so that a company can more accurately weigh the risks of trademark infringement against the risk of a PR disaster. Fan sites – which sometimes use trademarks in their domain names or in the images on their website – may not be good targets for reclaim if reclaiming results in backlash from the website’s owner or other fans of the site.

FairWinds’ perspective has always been that this type of inter-departmental cooperation is necessary for an effective domain name strategy. Risk appetite, marketing plans, product launches, and consumer behavior are important considerations in deciding which domain names are key for a company to own. Add to this list the impending launch of thousands of new gTLDs, and it’s more important than ever to get marketing, legal, IT, and domain name expertise in the room together –even before you have figured out how ICANN regulations and policies will come into play.

Decisions: Is There a Meme for Losing a UDRP Complaint?

Popular meme-generator Cheezburger Inc. filed a UDRP complaint against rival site WeKnowMemes over its primary domain name WeKnowMemes.com with the World Intellectual Property Organization (WIPO) citing infringement of one of its registered trademarks. It was up to WIPO to determine if the Complainant actually had rights to the disputed domain name or if the UDRP complaint was a thinly veiled bid to take down a competitor.

Cheezburger filed the UDRP complaint primarily on the grounds that the disputed domain name was identical or confusingly similar to its registered mark KNOW YOUR MEME. Additionally, the fact that both parties provide similar content might confuse Internet users searching for the Complainant’s content.

To clarify, both sites are active generators of “memes,” which are broadly defined as “concepts that spread from person to person via the Internet.” Memes can take the form of videos, images, written content, virtually anything that can be shared by Internet users. Cheezburger Inc. is most famous for its “lolcats” memes and is widely seen as one of the foremost meme producers on the web.

WeKnowMemes.com, though, is also a popular page, snagging almost 200,000 unique visitors in the month of February, according to Compete.com. The Respondent defended itself by saying that the established mark is made of generic terms and expressly states that it does not cover all uses of the term “meme.

In the end, the WIPO Panelist denied the complaint. It said that the question of whether or not the domain name is identical or confusingly similar to the established mark is a close call but it found that the Respondent had a legitimate interest in the domain and that it did not have a bad faith intention in registering and using it. This case highlights the fact that a UDRP complaint is not the appropriate avenue for attempting to quell a rival site, especially without strong evidence.

Decisions: The Wonderful World of UDRP

Disney filed a UDRP complaint with the National Arbitration Forum (NAF) against Greg Beinstock over 13 domain names related to a number of its titles, including Mickey Mouse, Tangled, and Aladdin. The proceedings were mostly standard for a complaint against an alleged squatter using marks for PPC sites, save for a notable exception.

It turns out that, while Disney owns the key marks for the primary terms in the majority of the disputed domain names, the most basic Aladdin mark it owns is for ALADDIN’S MAGIC CARPET RIDE and a French trademark for ALADDIN. The disputed Aladdin domain names featured no mention of the ride but rather referenced an Aladdin musical. In January, Disney announced plans to bring Aladdin to Broadway, but it clearly has not yet obtained any trademarks related to the show.

The Respondent, probably sensing that the other domain names were surefire transfers to the Complainant, singled out the Aladdin domain names in his filing, stating that they are not identical or confusingly similar to Disney’s mark and pointing out the 219 U.S. trademark applications containing the word Aladdin. He also states that he had been trying to create a stage version of Aladdin prior to Disney’s announcement, although he provides no facts to back this claim up. In his decision, the Panelist explains that while all of the other domain names are sufficiently similar to the Complainant’s marks, the Aladdin ones are not, and he orders them to remain with the Respondent.

Panelists are required to examine each domain in a complaint individually and some are not willing to transfer certain domains even if others at issue are clearly cybersquatted.  As such, this case should be a lesson to all brand owners that, regardless of your company’s size or influence, pre-existing trademark rights are essential in UDRP proceedings.  Proof of rights to important marks must be fully prepared before considering a UDRP complaint.

Embracing Evil: Baseball Team Wins Where Motorcycle Company Lost

In 2002, according to a recent article in the Wall Street Journal, Red Sox president Larry Lucchino apparently remarked that “The evil empire extends its tentacles even in to Latin America” in reference to the Yankees’ signing of Jose Contreras, a Cuban pitcher.

Rather than dispute the association with the villainous Star Wars society, the Yankees embraced it – so much so that, when a company named Evil Enterprises wanted to register “Baseball’s Evil Empire” for merchandising purposes in 2008, counsel for the Yankees filed a objection on the grounds that – yes – with regard to baseball teams, this term applied to the Yankees and the Yankees only. To support this evil claim, the attorneys for the Yankees cited articles from the last ten years in which the New York City team was referenced as the evil empire and also explained that the team played music from the Star Wars movies during their games.

This month, a panel of judges decided the fate of “Baseball’s Evil Empire” – in favor of the Yankees. One has to wonder if the panel of judges wrote the following sentences with smiles on their faces – or signed the decision with maniacal laughter: “In short, the record shows that there is only one Evil Empire in baseball and it is the New York Yankees,” wrote the judges. “Accordingly, we find that [the Yankees] have a protectable trademark right in the term . . . as used in connection with baseball.”

Setting aside the entertainment value of this case, it is an important one for those who may want to, say, start a business that sells merchandise with catchphrases or titles associated with and implicitly embraced by a sports team, celebrity, or organization. Then again, empires – evil or not – don’t always win when fans take their brand image in unintended directions: in the late 1990s, the U.S. Court of Appeals in New York City ruled that the term “hog”, a widely-used and accepted nickname for Harley Davidson motorcycles, could be used by a repair shop named the Hog Farm because the Hog Farm’s use of the term was a parody. You can even read about the decision on the Hog Farm’s website, on which “Battle Won” Hog Farm t-shirts are sold as well.