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Posts from the ‘Trademarks’ Category

Truevalueweb.com and Westorange.info – How to Learn from UDRP Complaints and Cease and Desist Letters

Domain name disputes are nothing new, and as a business you should be monitoring the potential use of your trademarks by those not authorized to use them.  Eventually, the unthinkable will happen and you will find out that someone is using your trademark in their domain name.  At this point you can send a cease and desist letter, pursue a Uniform Domain Name Resolution Policy “UDRP” Complaint, file a lawsuit, or do nothing.  Most folks will not want to pursue a lawsuit due to the costs involved, but at the same time won’t be ignoring this type of infringement.  That leaves you with the two most popular options, which are sending the opposing party a cease and desist letter, or filing a UDRP Complaint.

UDRP Complaints have various criteria that must be met in order for the Complainant to prevail.  Before moving forward with a complaint, you may want to ask yourself if you can satisfy the three main criteria that every Complaint must have in order to be successful.  The ICANN UDRP Policy includes these three main elements that a Complainant must prove, and they are stated within the policy as follows:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

True Value Company recently filed a UDRP complaint against the registrant of Truevalueweb.com with the National Arbitration Forum “NAF”.  The Complainant undoubtedly has trademark rights in the mark “True Value” as evidenced from its use of the mark in connection with hardware products since 1963 and its registered trademarks and service marks.  The perplexing part of True Value’s complaint is that it claims that there is confusion in the marketplace because the Respondent is offering similar services in connection with Truevalueweb.com.  Since True Value Company is a hardware store and Truevalueweb.com offers web hosting services, I really don’t see how this is possible.  Evidently, Complainant does offer web hosting and design services to businesses that are part of its cooperative, but not to the general public.  This is certainly not the strongest argument, but an attempt nonetheless to satisfy a necessary element by illustrating consumer confusion.

The Complainant also argues that the Respondent’s website uses the same color scheme in an attempt to confuse people and make them believe that Respondent is in some way affiliated with Complainant’s business.  A simple glance at the two websites is all you will need to conclude that this an odd claim.  The folks over at domainnamewire.com have done an excellent job illustrating the oddity of Complainant’s assertions in their article, and I urge you to look at the screenshots that they provided.  The final decision from the NAF, published here, references the three criteria I inserted above.  The NAF decided that Complainant provided enough evidence to satisfy criterion number 1 above, but that it did not prove that Respondent had no rights or legitimate interests in the disputed domain name.  Not being able to satisfy the second criterion, analyzing the third was not necessary.

If you do not want to pursue a UDRP Complaint, perhaps a cease and desist letter is better suited for your needs.  This is a less formal option, but is certainly something to be taken seriously.  If you are considering this approach then it may be worthwhile to review this rather humorous story about a New Jersey Township attorney’s letter to a citizen of West Orange, NJ, who is the owner of Westorange.info.  Cease and desist letters should not be issued lightly, and diligent research is a key element to preparing a good one.  In this situation, the West Orange Township attorney, Richard D. Trenk, issued the letter to a citizen who had registered a domain name that included the township’s name with the accompaniment of the “.info” domain extension.  After reviewing the site, it is blatantly clear that there could be no confusion as to whether the site was affiliated with the official government website located at westorange.org.  With that being said, the cease and desist letter was clearly not well thought out or planned.  If you have a few minutes, and are up for a good laugh, then I encourage you to read the entire uproxx.com article referenced above including pro bono counsel’s response to West Orange Township attorney, Richard D. Trenk.

It is important for every business to police its trademarks to the extent possible, and this may involve sending cease and desist letters and filing UDRP complaints when necessary.  If you are thinking of taking action, make sure that the necessary elements are in place prior to jumping the gun.  If you have any questions about this, please feel free to contact one of our Internet attorneys.

By Taylor Hume

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Piracy, ISPs, and six strikes: not two outs, or even one…

In a voluntary self-policing effort most likely intended to help safeguard their Communications Decency Act (“CDA”) Section 230 immunity from suit, several Internet Service Providers (“ISPs”) have created a “Copyright Alert System” (“CAS”) to allow content owners the opportunity to report piracy, through which “strikes” can be issued to Internet service users as a warning for piracy.  This YouTube user who I can’t identify as an authority, has a few generally accurate, and fairly informative videos about the CAS regime.  It’s not clear whether this user is a representative of the ISPs or not.  Comcast also has a pretty good set of faqs on the CAS.

Essentially, the CAS allows content owners to identify infringing IP addresses after verifying that infringement is taking place by P2P (“peer to peer”) file sharing.  The ISP then sends a warning to the Internet service user who had that IP address at the relevant time.  After multiple warnings the Internet service user may be required to view a video about piracy, and after several warnings that user’s service may be “throttled,” or slowed down to make piracy more difficult or time-consuming.  The CAS includes an arbitration process for challenging warnings (Russell’s teapot: How do you prove you weren’t pirating?), but no circumstance under which an Internet service user’s account is to be terminated.

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Don’t Be Caught Surprised: Internet Law Now Touches Every Aspect of Businesses

What is Internet law?

I get that question a lot.  When you think of it, the Internet and the law the governs has pervaded society over the last ten years and its expansion and this integration will continue.  This will be especially true for businesses – hence the name for this blog.  Below the jump are some examples of common trends and issues:

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Not Much Funny About This Junk

Sometimes stating the obvious is necessary – like in the photo attached to this post (which I took while traveling in Australia this past winter).  People ask why in society we need disclaimers preventing behavior that would seem obvious and unnecessary to 99.999999% of the population.  The next time someone complains about unnecessary disclaimers to me, I will point them to this post about the online and now legal saga between FunnyJunk.com (Funny Junk) , TheOatmeal.com (The Oatmeal), and attorney Charles Carreon (who, according to Arstechnica.com, is a self-proclaimed “counsel to the good and the good looking“).  I guess homely evil-doers need not apply.  Yes, I’m talking to you Kim Jong-un.

To many, lawyers have a sketchy reputation.  Just recently, we’ve had lawyers as prostitutes [insert lawyer joke here], lawyers planting drugs on an elementary school volunteer, and possibly even as murderers.  Now we have lawyers suing charities.  Wonderful.

How did we get to a lawyer suing charities including the American Cancer Society (especially one with a storied and successful career)?  Read more below.

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Recent UDRP Decision Shows that Domain Name Transfers Are Not Always an Easy Decision

In a recent UDRP proceeding, the popular X-Sports manufacturer Vans, Inc. tried to gain the rights to the domain name <protechelmet.com> from the company, Military and Rescue Supply. Despite the evidence provided by both sides, a team of three Panelists decided that this dispute is not the type covered by the UDRP and should be resolved by the courts. Due to this decision, the domain name for now rests with Military and Rescue Supply. Read more

Recent UDRP Proceedings: Don’t Buy Misspelled Domains

In several cases decided recently, the UDRP transferred the rights to several domain names using common misspellings to the complainant. For example, in one decision dated September 30, Google Inc. gained the rights to 37 domain names from Zhou Murong. These 37 domain names ranged from common misspellings to domain names actually containing the word Google. Examples include: gogledeals.com; googeldeals.com; gooogledeals.com; and my personal favorite, googeebooks.com.

Other sites have had similar problems with common misspellings of their websites being used to steal traffic from their actual site. Other examples where the rights to the domains were transferred to the owner of the correctly spelled name are:

  • Etsy, Inc. received the rights to etsyy.com
  • Enterprise Holdings, Inc. received the rights to
    enteriserentacar.com

With all three of these cases, there have been two things in common. First, the respondent has not responded to the filed complaint. And secondly, each misspelled website was simply a host for third party links, occasionally featuring competitor links for the website they were misspelling.

As discussed with other similar cases, the case for transference of the domain rights is a lot easier to make when the respondent does not respond to the complaint. Thus making it a lot easier to establish that the three points necessary for transference:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In each case, it was fairly easy to prove all three points due to the nature of the website and fact that the respondents did not respond to the complaint. Because of the common misspellings of the websites in question and the fact that each company had trademarks for their names, it was easily shown that each website was registered in bad faith and was simply created to steal potential traffic from the correctly spelled website. Each case also resulted in the rights to the domain name being transferred to the owner of the domain they were misspelling.

You can read the actual decision for Google, Etsy, and Enterprise by clicking on their names.

Apple Loses Trademark Request for “Multi-Touch”

Yesterday, Apple lost its appeal and has been denied the trademark for “multi-touch” by the United States Patent and Trademark Office. The original application for the trademark was on January 9, 2007, the same day the iPhone was introduced. However, the application was eventually denied, with the decision stating that the, “applicant’s proposed mark is merely descriptive of applicant’s goods.” Read more

Do not fight larger battles in UDRP proceedings

Interesting decision from the UDRP shows that bigger disputes need to be taken elsewhere.

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Lesson Learned: If you get notice of a UDRP proceeding – defend it.

In another UDRP decision last week, the rights to the domain name Weldon.com were transferred from the owner to the Complainant, IPS Corporation, largely because the original owner failed to respond whatsoever to the complaint. IPS Corporation owns several trademarks worldwide for the term WELD-ON, which is a bonding material for use with all types of plastic pipes. However, the weldon.com website as it stood before the decision of the Panel, simply contained third-party links and a search engine.

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Lady Gaga Says ByeBye to LadyGaga.org: A Lady Gaga Domain Dispute

Earlier this week, Lady Gaga lost a domain name dispute trying to grant her the rights to LadyGaga.org from its owner, an avid Lady Gaga fan. The fan website has already been up for three years and clearly states that it is for non-commercial use and is an unofficial fan-site simply dedicated to everything Lady Gaga.

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