All’s Fair in Fashion and Recession

The recession that followed the 2007 financial crisis may have officially ended in 2009, but the demand for bargains and bargain-hunting tips remains strong. In a World Intellectual Property Organization (WIPO) decision this week, blogger Mary C. Hall, aka The Recessionista, lost her battle for “therecessionista.net”.

As is noted in her decision, WIPO Panelist Angela Fox conducted some Internet research of her own and found that the term “recessionista” is well-defined and established in multiple locations on the Internet. My own search revealed that the word is recognized by the online version of the Oxford Dictionaries and that discount retailer TJMaxx has built a whole campaign around the concept of bargain-hunting fashionistas, dubbing its customers “Maxxinistas”. In fact, the Complainant tweets about TJMaxx deals from her Twitter handle, @Recessionista:

Tweet about TJMaxx by WIPO Complainant Mary C. Hall

The Complainant has held the registered trademark for The Recessionista since May of 2013 (it was filed in December of 2008). The Complainant’s Twitter feed and her blog at therecessionista.com appear to be updated with new content – including tips about sales and reviews of clothing lines – regularly. As for Respondent’s activity, the archives for content on therecessionista.net appear to date back to the summer of 2012, with the most recent post dated in the fall of 2012. On this blog, the Respondent (identified in the Panel Decision as the “Domain Discreet Privacy Service” but on the site as Kristin Whiting) features items for sale on an eBay page. In her decision the Panelist first finds that the disputed domain name is identical to the Complainant’s trademark. However, she goes on to deny the Complaint citing the Complainant’s failure to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name since her site is used for a budget-conscious shopping site. Despite the existence of Complainant’s trademark registrations, the Panelist refused to decide whether this is actually infringing on the Complainant’s trademark. And finally, with regard to the charge of registration and use of the domain name in bad faith, the Panelist cited the many other (some descriptive) uses of the word “recessionista” and found that “It is simply that under the narrow remit of the Policy, it is not possible for this Panel to conclude that the Respondent registered and used the disputed domain name in bad faith.”

The two most critical elements of this decision are 1) the Panelist’s rejection of any obligation to decide questions of trademark infringement and 2) her suggestion that the term “recessionista” may actually be descriptive for giving advice on budget-conscious shopping. I find both conclusions rather unsettling since there are many past UDRP cases that turn on questions of trademark infringement but most of these involve famous marks where the infringement is more obvious.  As to the second point, the Panelist is actually putting her own judgment of descriptiveness ahead of that of the different trademark offices that granted the Complainant’s various registrations. Regardless of what one might think about the role of Panelists in deciding questions of infringement, it is typically not their role to decide whether a registered trademark is merely descriptive (thus suggesting that the trademark office should not have granted a particular registration).

I agree with the Panelist’s comment that the UDRP was only intended for fairly clear cases of cybersquatting. However, rather than hang her hat on these broad points, the Panelist probably could have done a more detailed comparison of the appearance of the Complainant’s and Respondent’s websites and decided that no copying took place. A lack of copying may have then led one to the conclusion that no bad faith exists.

therecessionista.com March 27, 2014 homepage
Homepage of therecessionista.com as of March 27, 2014.
therecessionista.net March 27, 2014 homepage
Homepage of therecessionista.net as of March 27, 2014.

ICANN49 Update: NGPC Approves Important Language Specific to .BRAND gTLDs

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ICANN’s new generic top-level domain (gTLD) Program Committee (NGPC) has finally approved the long-sought and much-discussed Specification 13 – an amendment to the Registry Agreement that accommodates the special trademark needs of brands applying for their own top-level domains.

FairWinds staff on the ground at ICANN 49 in Singapore confirmed the news early Wednesday – to the relief of many corporate and non-profit applicants.

Earlier this month, ICANN Vice President of DNS Industry Engagement Cyrus Namazi published a revised version of the Specification 13 Base Agreement and explained, in an accompanying blog, that “If approved by NGPC, Specification 13 would provide limited accommodations to registry operators of TLDs that qualify as ‘.Brand TLDs.’”

While the number of accommodations may be “limited”, the significance of the revisions to brands that have invested so much time and money into their applications is not.

The incorporation of Specification 13 into the Registry Agreement for .BRAND applications will benefit them as well as consumers. In addressing some of brand owners’ collective concerns with the new gTLD Registry Agreement, Specification 13 will allow .BRAND applicants to move through the contracting process and transition to delegation with greater speed and ease.

And, given the broad consumer base and digital presence of many brand applicants, and the benefits the .BRAND gTLD model presents for improved online security and consumer trust, the incorporation of Specification 13 could speed consumer adoption of new gTLDs.

“FairWinds is grateful to the ICANN staff for its work on this issue, and to the NGPC for reaching an agreement to take into consideration the special circumstances of .BRAND applicants – a group that comprises almost one-third of all new gTLD applicants,” said Vice President for Consulting Services Samantha Demetriou.

Demetriou also acknowledged the critical role played by FairWinds policy experts Lillian Fosteris and Stephanie Duchesneau in recognizing the unique contractual needs of .BRANDs and working to ensure they were incorporated into the base contract.

Much work remains, however, to get .BRANDs over the finish line: The timeline for new gTLD applicants remains tight, and a formal process for requesting the inclusion of Specification 13 has not been announced.

For more information about the next steps for .BRAND applicants, continue to follow this blog or contact info@fairwindspartners.com to learn how you can receive timely and specific consulting guidance as a client of FairWinds.

Registrar Is Out-Squatted By A Clever Domain Owner

Domain name registrar Namecheap, Inc., a company that has no doubt profited from the cybersquatting activities of its customers, recently found the tables turned when it filed and lost a UDRP complaint over the domain name namechap.com. Namecheap filed the complaint with the National Arbitration Forum against Respondent Ky Song alleging that the domain name infringes upon Namecheap’s trademark registration for NAMECHEAP.

In support of its argument, Namecheap points to the fact that the Respondent is using the domain name to redirect Internet users to competing hosting and domain name registration services, such as GoDaddy. This isn’t the first time that Namecheap has used the UDRP to try to protect its digital assets as evidenced by successful previous complaints filed over domain names such as nmecheap.com, naecheap.com, and namecehap.com.

In its (quite lengthy) discussion, the NAF Panel discusses why Namecheap failed to prove that the domain name is identical and/or confusingly similar to its trademark. The Panel states that “namechap” does not constitute a misspelling or even “typosquatting” given that it consists of two generic terms, “name” and “chap”, each with a clear meaning of its own. The Panel goes so far as to say the missing “e” even distinguishes the domain name from Namecheap’s trademark.

At that point the content of the Respondent’s website no longer mattered, given that Namecheap failed to establish the first of the three elements required under ICANN policy, all that is needed for the Panel to conclude that relief should be denied. It’s interesting to see a domain name registrar lose such a battle, but it could have been worse. While Namecheap failed to recover the domain name, it was able to escape the Respondent’s accusation of reverse domain name hijacking.

Public Meeting Ushers in New Era of Internet Governance

singapore49-logo-300x155-02jan14-enThe 49th public meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) opens in Singapore next week, and FairWinds Partners will be on the ground attending formal and informal sessions, meeting with ICANN staff, and working toward solutions on key issues of interest to our clients.

The meeting likely will be abuzz with chatter about the Commerce Department’s decision to hand over control of ICANN to the multistakeholder community. We anticipate nascent discussions to begin defining how ICANN will establish its independence.

Those discussions will be on target as ICANN shifts from its focus on new top-level domains to the broader subject of Internet governance. New top-level domains will continue to dominate the business of stakeholder groups and constituencies. But ICANN’s pivot toward the big picture is reflected in the consolidation of all new top-level domain activities under its Global Domains Division.

The Global Domains Division has plenty of work ahead. Delays in how to resolve conflicting new top-level domain applications and other sticking points need to be resolved soon. FairWinds expects developments on:

  • Name collisions, where a new top-level domain may conflict with an internal domain already in use
  • ICANN auctions, specifically related to schedules and prices
  • Specification 13, which addresses issues of particular concern to brands
  • An orderly process for releasing geographic terms at the second level

To learn more about ICANN 49, new top-level domains, or FairWinds Partners, please check out FairWindsPartners.comBeyondtheDot.com, the Domain Name Strategy blog, @fairwinds,@gTLDstrategy@beyondthedot. Or call Taylor Frank at 202-223-5232.

What’s Next For Internet Governance

In the wake of the Commerce Department’s announcement that it will give up control of ICANN, perhaps only one thing is certain: We, the world’s Internet users, are witnessing the dawn of a new era in Internet governance.

The question is – what will define this new era?

Not surprisingly, politicians and lawmakers have jumped to a range of conclusions. While some are staunchly critical of and pessimistic about the Commerce Department’s move, others are supportive and at least cautiously optimistic, as Politico’s Jessica Meyers and Erin Mershon explain in “Internet Transition Triggers GOP Backlash.”

Those on the critical and pessimistic end of the spectrum suggest that, in relinquishing control of ICANN, the U.S. government has initiated the slow death of free speech on the Internet. In a Bloomberg Businessweek article titled “The U.S. Gives Up Its Control of the Free-Speech Internet,” staff writer Brendan Greeley writes that “It’s a bad sign that the U.S. has chosen to give up this power. It means that the administration doesn’t feel that it can get away with holding on to it, diplomatically, which means that on this issue, we no longer enjoy the support of countries such as Germany.”

Matsukata QuotationThose on the supportive end of the spectrum include Google, AT&T, and Comcast, according to a recent Time.com article (now available at cnnmoney.com). The same article concludes with a quotation from Dr. Laura DeNardis, Internet scholar, American University Professor and Beyond the Dot 2014 panelist: “”I expect that everything will go well, but the Devil will be in the details,” she says. “If everything goes smoothly, everyone should still be able to watch Orange is the New Black on Netflix.”

Somewhere in the middle live those who applaud the move while also expressing apprehension and concern. In a recent post, Lily Hay Newman, lead blogger for Slate’s Future Tense, concludes, “The United States is doing the right thing by stepping back and letting the international community develop a new system for backing ICANN. In the next few years there won’t be major or even noticeable differences in the Internet, but over time this change could cause unexpected problems and destabilization. Scary stuff.”

For those who follow Internet governance issues, the focus now turns to ICANN49, the upcoming public stakeholder meeting in Singapore from March 23-27. During the weeklong meeting, ICANN will begin the process of forming a new framework for Internet governance.

FairWinds Partners will be “on the ground” and reporting to clients as well as the greater Internet community through this blog, twitter (@fairwinds and @gTLDstrategy), and email updates. Click here to subscribe to FairWinds email updates and blogs.

First URS Cases Offer Little Guidance

As readers likely know by now, the Uniform Rapid Suspension system (URS) is a quick and low-cost dispute process available to brand owners when confronted with trademark infringement in a new generic top-level domain (gTLD). Rather than the domain being transferred to the brand owner, as is done in UDRP cases, the domain on the losing side of a URS decision is merely locked and any website content is replaced with a standard notice informing visitors that the domain has been suspended.

As with the UDRP, in a URS complaint the brand owner is required to show that the domain website contains some infringing content or is otherwise being used in bad faith. In one of the first URS decisions to be published, against the domains IBM.guru and IBM.ventures, the Panelist found that the domain owner had no legitimate interest in these domains and was using them in bad faith where the domains simply redirected visitors to the IBM.com website. But what happens when the domain only resolves to a parked page or to nothing at all?

In a URS case against BBVA.guru (BBVA is a well-known banking and financial group based in Spain) the domain owner claimed he was planning to develop a game whose acronym was BBVA and which had nothing to do with finance or banking. Although the decision does not say how this website resolved, the Panelist held that the alleged use is purely hypothetical and that no evidence was presented to support the domain owner’s claim. He also noted that the term BBVA is not a common or generic word and so it couldn’t be presumed that the domain owner intended to infringe on the well-known trademark.

Finally, there’s the opinion in a URS case against the domain AEROPOSTALE.clothing that merely recites the rote standards set out in the URS and finds for the brand owner with no further explanation. I personally find this to be rather disappointing since it recites few facts of the case (no mention of any website content at this domain) and offers no guidance for future URS parties.

So where does this leave us when faced with a domain that’s parked (resolves to no website) as is the case with so many new gTLDs? If the domain owner defaults and the infringed trademark is distinctive and well-known then perhaps a Panelist could rely on the BBVA or AEROPOSTALE cases. However, if the mark is capable of different meanings or is less famous a Panelist might decide that, since the domain has only recently been registered, it’s possible that the owner is working on a legitimate website – a non-competing business or even a fan page perhaps?

I suspect that URS Panelists will be presented with such fact patterns fairly soon and hopefully a consistent pattern of decisions will emerge. Given the very high standard of proof and unforgiving nature of the URS process I expect brand owners will appreciate all the guidance they can get!

On Brigades and Brands

Among more traditional, boots-on-the-ground struggles unfolding in the political sphere are power plays happening in cyberspace.  The same control and influence social media affords consumers – taking control of the conversation, providing feedback, making noise when something isn’t right about a brand or a product – has been useful to civilians reacting to issues of state governance.

According to the Washington Post, many participants learned about the protests in Ukraine “from internet sites like Facebook (49 percent), VKontakte (a Facebook-like social media site that is popular among Russian speakers, 35 percent), and Internet news sites, such as Spilno TV and Hromadianske TV (51 percent)” (survey participants chose all applicable answers for the question). The U.S. State Department has gotten in on the conversation too; Politico reports on the digital dipomacy the U.S. uses to “correct misinformation”, “advance a positive narrative” in the Ukraine, and engage with individuals rather than talking at them.

Twitter played a major role in the Arab Spring and is assuming a similar role in the protests unfolding in Venezuela.  The platform has empowered protesters and allowed retired army general Angel Vivas to provide encouragement, organizational help, and tactical advice to protesters, turning him into the face of the movement. According to Mashable, Twitter is also the only free media available.

“[The Internet] seems to be the last space that the government has not figured out how to monopolize,” Ashley Greco-Stoner of the Freedom House told Mashable.

The Venezuelan government’s limited influence is not through lack of trying: It has established its own presence on Twitter and allegedly sought to increase its standing through subversive tactics such as purchasing followers and using shell accounts to bump up the number of pro-government hashtag mentions.

Nevertheless, the protests continue, and attempts by the government to create manufactured good will online has not taken hold. That’s another lesson brands should keep in mind when registering and using social media handles and domain names: Every portal has to be a genuine representation of your company and your intentions.

The same is true for brands/Internet users and their digital presence: They must follow through on the promises they make on their platforms.

New gTLDs are opening new opportunities for individuals to hone their images. For example, someone might purchase a JohnDoe.PHOTOGRAPHY website to legitimize himself as a photographer, or a JaneDoe.GURU website to establish expertise. Businesses of all sizes also may use .GENERICs to establish a certain image, maybe by registering in .LUXURY. But if you (literally) don’t have the goods to back up the image you’re crafting, the campaign will not be successful.

One Strike, and You’re Out

Baseball

In many of my past entries you’ve heard me discuss the need to have UDRP complaints filed by counsel who are experienced in this specific area rather than simply relying on your usual litigation counsel. There are many examples of winnable cases that have been lost due to UDRP complaints missing some crucial piece of evidence. In some instances, Panelists have been generous enough to either request additional information from complainants or to at least deny these claims without prejudice, meaning that the brand owner can correct and re-file the case. However, that may all be about to end due to a new trend that appears to be forming amongst UDRP Panels.

In this case, the Robert Kennedy College of Zurich, Switzerland filed a complaint with the World Intellectual Property Organization over the domain name kennedyuniversity.com. Unfortunately, even though the Respondent failed to reply, its complaint was unsuccessful.

The problem, according to the Panel in its discussion and findings, was that the College claimed but failed to provide sufficient evidence that it is the owner of the trademark for ROBERT KENNEDY UNIVERSITY, which the Panel did not find to be interchangeable with the name “Robert Kennedy College”.

While the Panel could have asked the Complainant for a better explanation, the Panel decided not to, citing the recent cases of CAM London Limited and Comgest Asset Management International Limited v. Cam LondonLtd, WIPO Case No. D2013-2190 and 5 PRE VIE W AB v. Diego Manfreda, WIPO Case No. D2013-1946.

What these two cases have in common is that both Panels noted that complainants should “get it right” the first time and should provide all the information necessary to prove their case from the material contained in the complaint and its annexes alone. Unfortunately, once a UDRP complaint is denied in this manner it cannot be re-filed except under very limited circumstances and the brand owner could then be forced to spend even more of its precious budget on pursuing the domain in court as its only remaining venue for the dispute.

This trend serves as a warning that other potential complainants should take note of. It is not safe to assume that a Panel will always give you a second chance. As the Panel in this case further stated, “To give the Complainant “a second bite at the apple” would not be in line with the spirit of expediency and efficiency suggested in the Policy”.

As our readers know, the UDRP was created to be a low-cost, fast-track alternative to expensive and lengthy litigation. In order to get that benefit, carefully consider who to use for your UDRP counsel and always go with the seasoned veteran (FYI, we’ve filed over 220 complaints). The rule, now officially, is do it right, do it once.

Connecting with Dots

A slew of new gTLD and domain name events are on the docket for March, and each one has the challenge of bringing new ideas and different discussions to the table. One session that made me sit up and lean in at Momentum Consulting’s recent event in NYC this week was led by Chris Malone, Managing Partner at Fidelum Partners: How to Effectively Utilize Your Brand to Build Customer Loyalty in the Digital Age.

For such a tech-focused title, it really all boiled down to the human touch. How do brands and marketers avoid getting dazzled by the innovations at our fingertips and remain focused on delivering services and products in a way that connects with consumers and keeps them coming back!

According to Mr. Malone, two key factors affect perception of and loyalty to brands: Warmth (how well they achieve the “human connection”) and competency (how well they provide good services and good products).

Technology has improved competence, but perhaps at the expense of warmth. Shopping and communicating online – rather than visiting brick-and-mortar stores and talking with salespeople – appear to be eroding warm interactions.

The proposed solution? Brands must become more aware of how they are perceived and move “warmth” higher up on their priority list. Use available technology to engage with customers but provide that extra kindness and consideration that will turn a purchase or interaction into a loyal customer.

Perhaps that means thanking a follower for a retweet or encouraging customers to share their personal stories on your Facebook page. And maybe with new gTLDs that means giving customers a personalized experience with their own JaneDoe.BRAND page, populated with their favorite products, clothes in their size, or special coupons.  Maybe it means building a community of like-minded thinkers around an open .GENERIC.

As brands reconfigure their digital strategies, they should keep in mind that their success is not just about efficient delivery of information, products, and services.  It’s about the human connection as well.

Through the Looking Glass

By Tedeytan (Flickr) [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons

Google Glass seems to be facing a lot of scrutiny these days, with one woman claiming she was attacked at a bar for wearing a pair, and a man detained for hours on suspicion of piracy when he wore them to see a movie. Even the company found itself at the center of conflict, when recently trying to recover the domain name howtogetglass.com using the UDRP.

Google filed a UDRP complaint with the National Arbitration Forum against a non-responsive, privacy-protected Respondent listed simply as WP-3/whoisproxy.com Ltd. Unfortunately, just because a Respondent fails to respond, doesn’t automatically result in a “win” – the Complainant must still prove all three elements of the UDRP to obtain a transfer.

In this case, Google’s biggest challenge was definitely the “generic” nature of its GLASS trademark. In many UDRP cases involving generic terms the Complainants struggle to prove that the Respondent doesn’t have rights or legitimate interest in the domain name. Luckily Google came prepared and was able to leap this hurdle easily.

Google’s main weapon was the fact that the Respondent was pointing the domain name to a website titled “Google Glass Giveaway – How to get Google Glass for free,” a clear attempt to profit by redirecting consumers seeking information about the Complainant’s device. The nail in the coffin was the Respondent’s attempts to pass itself off as Google through pictures copied from the official GLASS site and use of the GLASS mark.

While Google had a rock solid case in this instance, not all brand owners will be as lucky, particularly when it comes to generic terms. Also, not all Respondents will be so foolish as to blatantly copy official materials onto an infringing website.  What this case does highlight, however, is the power of doing your homework and coming prepared with the right evidence, as well as making sure one has a “crystal clear” understanding of how the UDRP is meant to be used.