Barcelona Blues

Barcelona – synonymous with the work of Antoni Gaudi, tapas, football (or soccer as we Americans call it), and the occasional UDRP case, such as the recent complaint filed by Spanish company Social Point, S.L. with the World Intellectual Property Organization (WIPO) against “3745854 Domain Manager / Moniker Online Services, LLC” over the domain name (you guessed it) socialpoint.com.

This case caught my eye because the failure to recover the domain name must surely have been a blow to the Complainant, a developer of social games that can be played via Facebook or downloaded as iOS and Android apps. While the domain, an exact match to the Complainant’s trademark registration for SOCIAL POINT, should have been a slam dunk, the UDRP panel in this case found that the Complainant was only able to prove one of the three UDRP requirements.

The Panel agreed that the domain name was confusingly similar to the Complainant’s trademark, but did not agree that the Respondent had no rights or legitimate interests in the domain name. The panelist cited three previous cases to remind the Complainant that the generic quality of a domain name and the reselling of domain names or using them for paid links can be legitimate in certain cases.

  • Mobile Communication Service, Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (Dictionary term used in its generic sense)
  • Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (Reselling generic domains is legit where no trademark or competing business is referenced)
  • Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276 (Where there’s no indication of the trademark or it products/services, using dictionary terms for advertising is permitted)

In addition, the Panel says the Complainant conceded that the Respondent did not register the disputed domain name in bad faith in 2001, several years before the Complainant company was established. Luckily for complainant’s counsel this did not lead the Panel to find the Complainant guilty of reverse domain name hijacking.

While it may be tempting to use the UDRP to obtain ownership of a domain name that could be valuable to your company, it’s important to remember the rules of the UDRP and the precedents established in previous cases, as well as the rights given to domain name registrants who may not always be guilty of cybersquatting. Complainants may not be so lucky and could find the tables flipped and themselves in the role of villain, not victim.

Beyond the Dot 2014: Above and Beyond

“Spectacular execution of a wonderful event.” That was the assessment of one participant at the Beyond the Dot 2014 conference Wednesday at the Newseum in Washington, D.C.

366A1772The conference focused on the effect of new top-level domains on average Internet users and drew a capacity crowd of over 150, several well-received speakers, and multiple media stories.

In Washington D.C., #beyondthedot was even trending on Twitter yesterday afternoon.

Guests came from as far away as the west coast and Europe and included applicants for new top-level domains, brand owners, marketers, lawyers, and industry insiders.

Over the course of the day, skilled moderators led seven panels in lively discussions about how Internet governance is evolving, exactly what the Internet Corporation for Assigned Names and Numbers (ICANN) does, and how brands are crafting digital strategies to accommodate the revolution in the domain name space.

New top-level domain owners, including luxury brands owner Richemont and storage giant Extra Space Storage, said they originally applied as a hedge to protect their brands but came to realize the opportunity new top-level domains hold.

Google’s so-called “gTLD guy” Jordyn Buchanan said Google realized the security benefits of a new top-level domain after a number of its sites in country code top-level domains – such as .IN for India or .PK for Pakistan – were repeatedly hacked.

Erwin Cruz said industrial supply company Grainger applied for .SAFETY to create a community for safety professionals.  And Melissa Madigan of the National Association of Boards of Pharmacy gave four reasons for their .PHARMACY application: Legitimacy, trustworthiness, security, and safety.

“You guys thought of (every) detail and put (together) an agenda that was extremely relevant,” said Shaul Jolles, owner of .UNO, which aims to be the Spanish version of .COM “I have yet to be (at) a conference that absolutely everybody felt was well done. Well, here it was the consensus. Well done.”

In the mean time, reach out to us to have a conversation about what you need to know to adapt your own digital strategy, and keep your eye on this blog for video clips of the event.

Improving Your Sports Marketing With the Right Domain Names

Brands are constantly juggling different platforms to reach different demographics. Print, TV, and digital platforms are all part of an ever-changing formula for the attention – and buy-in – of customers. Between conceiving of different ideas and then coordinating them, the job of delivering a brand’s message is far more complicated than it was 20 years ago.

Sports marketing involves juggling different platforms to reach different demographics. Print, TV, and digital platforms are all part of an ever-changing formula for the attention – and buy-in – of customers. Between conceiving of different ideas and then coordinating them, the job of delivering a brand’s message is far more complicated than it was 20 years ago.

Some brands have stepped up to the challenge of sports marketing by sponsoring sports events and arenas. And, as with any product launch, venue sponsorship should be supported by key domain name registrations to grab online traffic.

A Growing Trend in Sports Marketing: Branding a Venue

As the Seattle Seahawks trounced the Denver Broncos on Super bowl Sunday, MetLife was reaping the game-day rewards of its venue sponsorship:

  • TV exposure in shots of the stadium
  • Tagged photos
  • Countless press hits, and
  • Endless social media mentions

Leading up to game-day, the website “metlifestadium.com” was drawing tens of thousands of visitors a month looking for information, which means tens of thousands of visitors a month exposed to the MetLife brand. Their sports marketing strategy was not just successful from a venue-branding point of view but helped positively impact MetLife’s overall online/digital brand strategy.

Now, as the world watches the always eagerly anticipated Olympics, 10 Worldwide Olympic Partners are also expecting massive branding success.

Is Sports Marketing’s Branded Venues Translating to Online Real Estate?

Intrigued to see how brands are translating sports marketing sponsorships to online real estate, FairWinds paired each Fortune 100 brand with each of eight terms in the .COM top-level domain (TLD):

  • arena
  • center
  • classic
  • cup
  • field
  • park
  • stadium, and
  • tournament

We then searched those 800 domain names to find out:

  • How many were registered by brands
  • How many were registered by third parties
  • How many were available, and
  • How the registered domain names were used.

FairWinds also looked at the combination “BrandOlympics.com” for the 10 Worldwide Partners of the 2014 Winter Olympics in Sochi.

It turns out brands are underrepresented in the sports-venue domain name space:

  • Only 8% of the domain names examined are owned by their corresponding brands, with 74% of the examined domain names still available for registration
  • Of the 10 Worldwide Olympic Partners, only 1 is using a “BrandOlympics.com” combination, and 4 Olympic sponsors don’t even own their own BrandOlympics.com

Read the full report here.

Protecting Your Online Turf in “Legacy” and “New” gTLDs

Brands thinking about incorporating a sports arena sponsorship into their sports marketing strategy would do well to lock down their domain names way in advance of a launch. Citigroup learned this the hard way when it had to spend time and money reclaiming CitiField.com through the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Given the uncertainty of whether Internet users will search for these venues in any of the .BRAND new generic top-level domains – typing “stadium.metlife” rather than “metlifestadium.com” into the address bar, for example – makes this group of eight combinations a finite resource for brand owners.

Even as other, open gTLDs hit advertisements and Internet browsers this year, none of the eight terms examined here will be among the new options.

The new gTLD “.SPORTS “was recently barred from launching. As a result, this further reduces any new combinations for sponsors to create creative new venue domain names as part of their sports marketing strategy.

While new gTLDs hold many opportunities for brand owners and Internet users, brands should take a serious look at brand-venue and brand-Olympics combinations in .COM, as they look for potential sponsorships moving forward.

 

Dances With Domain Names

While North Carolina State University at Raleigh’s athletes might be known as “the Wolfpack”, the University’s growl was unfortunately reduced to a whimper when a Panel denied its UDRP complaint.

Wolves

The University filed the complaint against the Ascot Group, Inc. over the domain name wolfpack.com, with the National Arbitration Forum (NAF). In its argument, the Complainant University attacks the Respondent on several fronts, alleging that the Respondent’s use of the colors red and white illustrate an attempt to pass itself off as the Complainant, and stating that the Respondent had specifically tried to sell the domain name to the Complainant in the past, after registering it with full knowledge of the Complainant’s right to the mark.

In response, the Respondent reveals that it is involved in a business endeavor to promote and sell snowshoes under the WOLFPACK brand, submitting its registration of wolfpackapparel.com and wolfpacksnowshoes.com as proof. It also critically points out the generic nature of the term WOLFPACK, referencing the animals, German submarines, and the movie “The Hangover”. Lastly the Respondent delivered two final crushing blows: laches, the Complainant waited 15 years to file this claim; and reverse domain name hijacking (RDNH), the Complainant is abusing the UDRP to get the domain name without having to purchase it.

While the panel in this case ultimately sided with the Respondent in denying the Complainant’s request to transfer the ownership of the domain name, it also stated that it did not find the Complainant guilty of RDNH, specifically citing a previous UDRP case:  Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy). The Complainant’s case only failed because the panel felt that there was not enough evidence to support the Complainant’s assertion that the Respondent registered the domain name in bad faith.

In the end, the University was left howling at the moon with no word on whether it might try to negotiate a purchase deal with the winning Respondent.

Beyond the Dot 2014: Political IT Innovator Announced

messina

We can hardly contain our excitement as the Beyond the Dot 2014 conference comes together. Our latest coup: President Obama’s 2012 campaign mastermind Jim Messina will keynote the conference, which is designed to examine the impact of Internet domain names on businesses and consumers.

The conference will take place at the Newseum in Washington D.C., and we welcome you to register here.

“We look forward to hearing Jim’s ideas about where new top-level domains will fit into politics and American society over the next several years,” said Nao Matsukata, President and Chief Executive Officer of FairWinds Partners, which is hosting the conference. “Jim’s 2012 consultation with the nation’s foremost tech leaders is just one example of his out-of-the-box thinking, which is so crucial to the future of the Internet.”

Messina, who managed the President’s 2012 re-election campaign, is known for perfecting the digital age political campaign through the unprecedented use of technology to target likely voters. His first order of business was to visit the chief executives of a number of technology companies – Apple, Microsoft, Facebook, Zynga, and Google – to seek advice.

“I went around the country for literally a month of my life interviewing these companies and just talking about organizational growth, emerging technologies, marketing,” Messina told Bloomberg Businessweek.

In two private conversations, according to Businessweek, “Steve Jobs tore into Messina for all the White House was doing wrong and what it ought to be doing differently, before going on to explain how the campaign could exploit technology in ways that hadn’t been possible before. “

Messina also sought advice from Steven Spielberg and his team at DreamWorks on how to capture the attention of American voters.

Not surprisingly, Messina concluded that a modern day presidential campaign is very much like a technology company. “What they’ve done is more readily applicable to me, because they all started very small and got big very quickly,” he told Businessweek.

Currently, Messina is leading Priorities USA, a political action committee that supports Hillary Clinton for president.

Beyond the Dot 2014 will be the first conference to explore the ramifications of new top-level domains (the text to the right of the dot in a web address, such as .COM, .NET, and .ORG) on the end user.

Other speakers at the conference include former Ambassador and Director of National Intelligence John Negroponte, who is also chairman of the Internet task force at the Council on Foreign Relations, and Akram Atallah, President of the Global Domains Division at the Internet Corporation for Assigned Names and Numbers (ICANN), which oversees many technical functions of the Internet. In addition, the owners of new top-level domains .GOP, .GAY, .NYC, and .UNO will participate in panel discussions. See the agenda here.

Beyond the Dot 2014 is designed to educate the public about the coming changes to the Internet: approximately 1,400 new top-level domains over the next two years, in addition to the 22 previously in common use. These changes will affect the totality of Internet behavior, from search, to navigation, to commerce, to security, to privacy, to analytics, and more. For a primer on this unprecedented expansion of the domain name space, check out FairWinds’ microsite beyondthedot.com.

Not Famous Enough To Overcome Monkey Business

As those familiar with the new gTLD rollout know, the Uniform Rapid Suspension (URS) system was created as a less expensive and faster road to trademark enforcement than the longstanding Uniform Dispute Resolution Policy (UDRP).  However, in a recent UDRP decision we were reminded that the UDRP itself was designed to be a less expensive and faster alternative to full-blown court litigation.

In this dispute the owner of the trademark RIMMEL for toiletries, cosmetics, soap, and perfumes claimed that the domain <rimmel.com> was an infringement of its rights to the brand. The domain was created in 1997 and was used briefly in 2005 for pay-per-click links to beauty-related products but, for most of its life, it resolved to a blank page or a Google search bar. The Panelist first addressed the passage of 16 years without any enforcement action by the brand owner but eventually dismissed the Respondent’s claim of laches (delay) following the majority view that under the express terms of the UDRP, the passage of time, without more, does not make out a defense under this doctrine.  However, this doesn’t mean the passage of time is completely irrelevant when considering the three elements that must be proven in any UDRP case.

When the Panelist got to the third of those elements – the question of the Respondent’s bad faith in registering the domain – he decided the trademark just wasn’t sufficiently famous that he could conclude that anyone registering the <rimmel.com> domain name in 1997 did so with knowledge of the Complainant’s brand.  Besides, he concluded, if the Respondent had intended to monetize whatever goodwill exists in the mark it likely would have done so already. Failure to spring the trap after a 16 year hibernation suggests that it might not have been a trap in the first place.

Finally, despite mentioning Complainant’s suspicions that the Respondent was hiding behind a false name and was really a well-known cybersquatter, and after characterizing some of the Respondent’s own conduct and evidence in the case as “monkey business,” the Panelist pointed out that UDRP is not appropriate for all domain name disputes. He commended the Complainant on having done a thorough job in researching and submitting its evidence but said, that with no witness cross-examination or document discovery permitted by the UDRP, the Policy requires the Panel to act on the evidence presented – not on mere suspicion or suggestion.

In a dispute with cloudy facts and evidence like this one, the courts would provide a better venue since they would enable the Complainant to probe further into the true facts surrounding the disputed domain and its owner. It will be interesting to follow this story and see if the brand owner will take this step and put the facts of this case to the test. However, after taking 16 years to pursue the domain name, we may be waiting quite a while before the Complainant pursues this monkey again.