JUNE 2014 NEWSLETTER NEWS AND INTELLIGENCE FROM TRADEMARKS & BRANDS ONLINE

HIGHLIGHTS IN THIS ISSUE: 5 NINTENDO WII CUSTOM FEATURE BLOCKED ONLINE

16 ICANN 50 REVIEW Page 12 Fake fashion: flattery or theft? 20 MARKETING gTLDs: START SPREADING THE NEWS

22 HOW TO WIN A URS DISPUTE

OTHER CONTENTS >>

TBO Newsletter 06:14 EDITOR’S LETTER/CONTENTS 3

JUNE 2014 Please copy me NEWSLETTER Can counterfeiting be good for luxury brands? It might seem a perverse question, NEWS AND INTELLIGENCE FROM TRADEMARKS & BRANDS ONLINE but it’s one that requires a lot of consideration. Some fashion brands, most notably HIGHLIGHTS IN THIS ISSUE: 5 NINTENDO WII CUSTOM FEATURE BLOCKED Prada, argue that fake goods can benefit them because it shows people want to ONLINE copy them. It’s a viewpoint that turns conventional wisdom on its head, which is perhaps why it’s by no means universal.

16 ICANN 50 REVIEW To mark the launch of our special industry report, we focus on the differing views Page 12 of the benefits of counterfeiting in the fashion industry, and for those who see it as Fake fashion: a scourge, the innovative ways in which brand owners can combat it. The special flattery or theft? 20 MARKETING gTLDs: reports are designed to profile IP-intensive industries, providing an update on the START SPREADING THE NEWS most pressing issues facing them online. To coincide with the ICANN 50 meeting in London—where a record number of

22 HOW TO WIN A people attended—we have reviewed some of the most important and interesting URS DISPUTE sessions for brand owners. As you will see, revealed how it planned to apply for only four new generic top-level domains, rather than the 101 it ended up selecting, while we heard how the Trademark Clearinghouse (TMCH) is OTHER CONTENTS >> struggling to make its mark on rights owners. We will let you decide why. Trademarks & Brands Online is published by: Such a lack of awareness is not confined to the TMCH, but extends to the new Newton Media Limited Kingfisher House, 21-23 Elmfield Road, Bromley, gTLDs as a whole, even if the total number of registrations recently topped one BR11LT, million (this has been helped by some registries handing out domains for free). +44 203 301 8200 Andy Churley, chief marketing officer at Famous Four Media, explains how the Director domain name industry, including .brand applicants, can spread the news about Nicholas Lipinski the new gTLDs. In particular, he says, ICANN needs to step up. Publisher John Haley Finally, David Weslow, partner at Wiley Rein LLP, explains what we can learn Telephone: +44 203 301 8205 Email: [email protected] from some of the early cases under the Uniform Rapid Suspension System, which Managing editor allows trademark owners to quickly tackle clear-cut cases of cybersquatting. As he Martin Essex shows, the URS may not be appropriate for all cases of cybersquatting. Telephone: +44 203 301 8211 Email: [email protected] Ed Conlon, Editor Editor Ed Conlon Telephone: +44 203 301 8210 Contents Email: [email protected] 5 News Sub-editor Ros Bromwich 5 Nintendo Wii custom feature blocked online Journalists 5 Volkswagen World Cup ad campaign stirs controversy Leonie Mercedes, Max Walters 6 targets online infringers through ISPs Editorial assistant 6 persuades Anheuser-Busch to post beer ingredients online David Brooke Production and design 8 YouTube to remove music videos after licensing row Fisherman Creative 8 IKEA orders fan site to remove advertising ©Newton Media Limited 2014 9 Chinese firm could face record piracy fine All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted 9 Kim Dotcom offers $5m to whistleblowers in any form or by any means, electrical, mechanical, photocopying, recording or otherwise without the prior 10 Yahoo fails to throw out trademark infringement claim again written permission of the publisher. 10 Browsing online does not infringe copyright, CJEU rules The views expressed in TBO are not necessarily those shared by the publisher, Newton Media Limited. 12 Industry report Wishing to reflect the true nature of the market, we Fake fashion: flattery or theft? have included articles from a number of sources, and the views expressed are those of the individual 16 Conference call contributors. No responsibility or liability is accepted by Newton Media Limited for any loss to any person, legal ICANN meeting: turning fifty or physical, as a result of any statement, fact or figure contained in TBO. 20 Marketing gTLDs This publication is not a substitute for advice on a Start spreading the news specific transaction. The publication of advertisements does not represent endorsement by the publisher. 22 Cybersquatting Trademarks & Brands Online (TBO): ISSN 2049-2359 (Print) How to win a URS dispute

www.trademarksandbrandsonline.com 4 EDITORIAL PANEL TBO Newsletter 06:14

Safir Anand, Ingrid Edward Andy partner, Baele, vice Chatterton, Churley, Anand & president, partner, chief Anand Philips DLA Piper marketing Intellectual officer, Property & Famous Four Standards Media

Elisa Stuart Fuller, David Green, Marie- Cooper, director of head of Emmanuelle senior communications, global digital Haas, head director of NetNames marketing, of the internet product KPMG committee, marketing, ECTA MarkMonitor

Brett Susan Roland Igor Motsnyi, Heavner, Kayser, LaPlante, partner, partner, partner, chief Motsnyi Legal Finnegan, Jones Day marketing Services Henderson, officer, Afilias Farabow, Garrett & Dunner LLP

Gretchen John Olsen, Flip Petillion, Adam Olive, director partner, partner, Rendle, of policy Edwards Crowell & senior & industry Wildman Moring LLP associate, affairs, CSC Palmer LLP Taylor Digital Brand Wessing LLP Services

Kristina Bob David Taylor, Stéphane Rosette, Samuelson, partner, Van Gelder, of counsel, vice president Hogan Lovells managing Covington & of sales and International director, Burling LLP marketing, LLP Milathan Donuts Inc

David Catherine Nick Wood, Weslow, Wolfe, managing With thanks to the partner, Wiley partner, Boult director, members of the Rein LLP Wade Tennant Valideus TBO editorial board. Contact Ed Conlon, the editor, for more information.

www.trademarksandbrandsonline.com TBO Newsletter 06:14 NEWS 5

Nintendo Wii custom feature blocked online IN BRIEF The creator of the Super Smash Brothers video Mario Brothers, The Legend of Zelda and game series, Masahiro Sakurai, has said he Pokémon. The first in the series was released Google to launch domain will not allow modified characters to be used in 1999. name registrar Google has said it is planning to launch its own online in the latest game, because of concerns A post on Tumblr called ‘pleasesakurai’ has domain name registrar that will allow users over copyright infringement. attracted thousands of requests from players to “search, find, purchase and transfer” web asking the creator to include characters from The Mii channel on the Nintendo Wii U addresses. console allows users to upload images and other video game franchises. n modify existing characters. Google Domains will help businesses looking to set up an online presence, according to the Writing for the Japanese gaming magazine search company. Famitsu, Sakurai said: “We don’t want the In a statement, Google said it has online play to become a copyright free-for-all.” collaborated with four firms that specialise “It’s probably not as much fun to play against in building websites—Squarespace, Wix, someone using a character based on someone Weebly, and —to help businesses you may not know,” he added. create one of their own. Sakurai was initially reluctant to include Mii The registrar service will allow customers to buy characters on the latest version of the game, or transfer domains, including .com, .biz and which is due to come out later this year, but .org, for $12 a year. made concessions to online requests to include It is not fully active—it is an invitation-only beta the feature in offline play. testing service—but Google said it was giving Super Smash Brothers is a fighting game “a small group of people” the chance to use it and send feedback on their experience. series that features characters from a range of No copyright “free-for-all” well-known Nintendo games including Super AMBROPHOTO / SHUTTERSTOCK.COM Volkswagen World Cup ad campaign stirs controversy Car manufacturer Volkswagen has launched However, Dan Smith, head of advertising and official sponsor of the governing body of a football World Cup advertising campaign marketing law at Wragge Lawrence Graham & the sport in , the Brazilian Football despite rival Hyundai being one of the Co, told TBO he did not think the campaign Confederation (CBF), and Hyundai. tournament’s official sponsors. constituted ambush marketing, although he Volkswagen’s advert, a play on the Portuguese The German manufacturer’s adverts, aired said brands would need to remain vigilant when word ‘hexa’, meaning ‘sixth’, promises to change every time a goal is scored, show Golf GTI cars using football to inspire advertising during the the warranty on models sold between January matching the national colours of the country tournament. 1 and July 13 from five years to six if Brazil, the that has scored, driving across a football pitch. “FIFA is very active at protecting and enforcing host nation, were to win the competition for a sixth time. In the background the word ‘Gooooooolf’ is its rights and earns a huge amount of revenue shouted instead of the familiar cry of ‘gooooooal’. from its official sponsors. It will likely keep a Volkswagen and CBF said Hyundai is allowed to close eye on advertisers looking to play on the market its advertising around the tournament The celebration videos are currently shown in current popularity of football. It’s important that but cannot refer to Brazil’s national team. the US on the ESPN.com and Univision.com those businesses remain cautious so that they websites and on television. A spokesman for FIFA said it was not in a don’t trip up and take proper account of FIFA’s position to provide individual feedback on Last year, TBO’s sister publication WIPR IP rights.” every potential ambush marketing incident. reported that FIFA’s legal counsel Auke- Jan Bossenbroek had said there had been FIFA has a number of registered trademarks, “In general, where there is a clear commercial instances of “large corporations” trying to use including the World Cup’s official logo and the intention to take a free ride on the goodwill the popularity of the World Cup in marketing words FIFA World Cup and Brasil 2014. vested in the event and the public excitement material and promotional activity. Smith added: “This seems like a legitimate surrounding it, FIFA may need to engage in enforcement activities to halt an infringing The activity, known as ambush marketing, occurs marketing campaign. FIFA and its sponsors situation,” he said. when companies try to advertise or promote don’t have exclusive rights to associations with around an event they are not sponsoring. football, national colours of countries or the “However, FIFA will not resort to such action word ‘goal’ or words that sound like it.” without an in-depth analysis of the intention, scale Volkswagen did not respond to a request for and commercial impact of the matter at hand.” comment on the campaign and whether it had Earlier this year, WIPR reported on another received complaints. dispute involving Volkswagen, which is the Hyundai declined to comment. n

www.trademarksandbrandsonline.com 6 NEWS TBO Newsletter 06:14

IN BRIEF Canada targets online infringers through ISPs ICANN hosts largest ever meeting Internet service providers (ISPs) in Canada may A summary of the act says it aims to “update soon be required to send warnings to repeated the rights and protections” of copyright Domain name system overseer ICANN has announced that its latest meeting is the copyright infringers as part of the government’s owners to better address the “challenges and largest attended in its history. efforts to clean up its copyright law. opportunities” of the internet, in order to be in line with international standards. A total of 3,300 people registered for the According to new measures, which form part ICANN 50 meeting, which was held in of the Copyright Modernization Act, a ‘notice- The regime will come into force six months London from June 22 to 26. and-notice’ system will be implemented. after the publication of an Order in Council, Attendees included representatives from Under the new system, so-called intermediaries a Commonwealth tradition where legislation the Chinese government and the recently- such as ISPs will be told to take action after receiving is given royal approval. In Canada, this is done formed Lebanon Internet Centre. a notice of infringement from right holders. by the Queen’s Privy Council for Canada. Among the speakers at the opening The act says that a claim of infringement can be sent The act is expected to be in force by January ceremony were Ed Vaizey, UK minister to an entity that provides “the means, in the course 2015. n for culture, communications and creative of providing services related to the operation of the industries, and Baroness Rennie Fritchie, internet or another digital network”. chair of domain name registry Nominet. After receiving a notice, an ISP would then be Opening the meeting Fadi Chehadé, president required to tell subscribers who are suspected of ICANN, said: “Today is a great day for the of piracy that they might be breaking the law. advancement of the multistakeholder model and its inclusivity. ICANN 50 is a milestone The system stops short of the Digital meeting for many reasons, not the least the Millennium Copyright Act, a notice-and- remarkable affirmations of the multistakeholder takedown system in the US that requires community model it has brought.” suspected infringement to be stopped when a DARREN WHITTINGHAM / SHUTTERSTOCK right holder requests it. RAWPIXEL / SHUTTERSTOCK According to Canada’s act, ISPs will be required to forward notices, initially sent by copyright owners, to users whose internet addresses have been identified as being the source of possible infringement. ICANN 50 sets new record The ISP must then inform the copyright owner Canadian pirates beware once the notice has been sent. Blogger persuades Anheuser-Busch to post beer ingredients online

US brewer Anheuser-Busch has agreed ingredients—just like Coca-Cola has done for Bud Light are water, barley malt, rice, yeast to publish the ingredients of all its beers years. This won’t hurt their business, only help and hops. following an online campaign by a food it by being honest with consumers who expect Hari, whose petition now has more than blogger. more of companies as large and prominent 55,000 signatures, thanked her supporters as Anheuser-Busch and MillerCoors,” Hari Vani Hari, who writes at foodbabe.com, by saying: “It’s pretty amazing that making posted on June 11. launched a petition urging Anheuser-Busch your voice heard can change the policies of a and rival beer manufacturer MillerCoors to Within 24 hours, the petition received more multi-billion dollar company overnight.” list the ingredients found in their products. than 43,000 signatures and Anheuser-Busch She added: “MillerCoors needs to step up agreed to post all ingredients online “in the Such information is hard to find, she said, to the plate, post their ingredients, and so coming days, but I do not have a concrete because US brewers don’t have to display the should all other beer companies for that timeline”, said Hari, who was contacted by the ingredients on their beers’ labels. matter! Please continue to sign and share company. “That people know more about what’s in the petition—let’s end all #MysteryBeer a bottle of Coca-Cola than a beer—one of Anheuser-Busch has posted details of its together!” flagship products Budweiser and Bud Light on the world’s most popular drinks—is a real Anheuser-Busch is known in IP circles for its the website tapintoyourbeer.com, although it problem,” she said. long-running trademark dispute with Czech has not yet provided information about beers “I’m not asking them to change their rival Budejovicky Budvar, with the companies such as Leffe Blond and Stella Artois. labels, or their formula. The secret recipe fighting across multiple jurisdictions for can remain secret while still disclosing the The ingredients found in both Budweiser and more than 100 years. n

www.trademarksandbrandsonline.com NET NAMES LAST ISSUE

Your website no longer has to be a dot com or dot org anymore – it can now be dot whatever you like, this is the biggest shake up since the internet began.

Visit thedotbigbang.com and find out why this is such great news for your business and your brand. 8 NEWS TBO Newsletter 06:14

IN BRIEF YouTube to remove music videos after licensing row Millions wasted advertising to ‘bots’ Video-sharing website YouTube has confirmed it will remove videos by artists whose record labels Automated ‘bots’ make up a third of traffic on automobile websites, according to a report have not signed up to its new streaming service. from Solve Media, a service used to detect The streaming service, which is due to launch human traffic. A bot is a software application at the end of this summer, will require users to that runs automated tasks over the internet. a pay a subscription fee to watch music videos In its report, Quarterly Bot Traffic Market without advertisements. Advisory, Solve Media confirmed that 22 YouTube has asked music labels to sign up to a percent of visitors to car websites were bots, with 14 percent displaying “suspicious” new licensing agreement or face their content behaviour. being removed from the site. According to eMarketer, a marketing It will mean music videos from artists such as research company, the total spending Adele and the Arctic Monkeys will be removed on digital advertising campaigns in the if labels representing them do not accept the new automobile sector totals $2.5 billion, with licensing agreement. the main focus being on automotive sites. So far, 95 percent of labels have accepted the new “The bot problem is not going to improve terms, including major brands such as Warner, unless the companies with clout use it to Sony and Universal. demand an engaged human audience,” said Ari Jacoby, chief executive of Solve At a conference in London on June 4, a coalition Media. “Bigger budgets mean more power of trade bodies representing independent and influence, which puts automotive music labels, including the Worldwide advertisers in the proverbial driver’s seat.” Independent Network (WIN) and the YouTube to drop artists Independent Music Companies Association, SHINING MEDIA / SHUTTERSTOCK.COM IP crime under attack called on the European Commission (EC) to “The vast majority of independent labels around A British IP crime unit is investigating around intervene in the row. the world are disappointed at the lack of respect and £28.9 million worth of IP crime, according The coalition asked the EC to stop YouTube understanding shown by YouTube. We once again to an interim report by a public-private “abusing its market power over independent urge YouTube to come and talk to us,” she added. partnership. music” and called for regulatory action to YouTube, however, remained resolute. The Police Intellectual Property Crime Unit “safeguard against abusive conduct and to A spokesperson for the video-sharing website (PIPCU), based in the City of London, has promote real competition”. also helped to suspend nearly 2,400 .co.uk said: “Our goal is to continue making YouTube domains since it formed in September, said Alison Wenham, chief executive of WIN, said: an amazing music experience, both as a global the report. “By refusing to engage with and listen to the platform for fans and artists to connect, and as a revenue source for the music industry ... We are It was produced by the IP Crime Group, concerns of the independent music sector, which comprises representatives from the YouTube is making a grave error of commercial excited that hundreds of major and independent n private sector, enforcement agencies, and judgement and misreading the market. labels are already partnering with us.” government departments that have a role in tackling IP crime in the UK. Along with PIPCU, the group’s members IKEA orders fan site to remove advertising include the Federation Against Copyright Theft and the Anti Counterfeiting Group. Swedish retailer IKEA has told the owner a post dated June 14. of ikeahackers.net to remove all advertising After negotiations between Jules’s lawyer from the site, months after sending it a cease- and IKEA, the site is allowed to continue but and-desist letter. must operate non-commercially, which means The site encourages people to share pictures removing all advertising from it. of their modified or repurposed IKEA products, known as “hacks”, and is run This must be done by June 23, said Jules, who by a self-confessed “crazy fan” using the added: “I am crushed.” pseudonym “Jules”. “I don’t have an issue with them protecting their “Some months ago”, the company told Jules to trademark but I think they could have handled transfer the domain name or face legal action it better. I am a person, not a corporation. A PIPCU on the rampage because the site infringed its IP, according to blogger who obviously is on their side. Could MELISSA MADIA / SHUTTERSTOCK.COM

www.trademarksandbrandsonline.com TBO Newsletter 06:14 NEWS 9

Chinese firm could face record piracy fine “Given its record of repeated infringements of copyrights even after a previous fine from the A Chinese company that offered a very large imposing a fine worth RMB 260 million ($41.7 administration, the company deserves a severe amount of pirated content could be fined million), more than triple the estimated amount punishment,” Zeng added. more than RMB 260 million ($40 million), the company earned in revenue. It is not the first time QVOD has been in the potentially making it a record penalty for The SMSA calculated the figure based on spotlight for the wrong reasons. In May, it online copyright infringement in the country. revenue estimations and the company’s previous was found guilty of spreading pornographic QVOD Technology, a Shenzhen-based video- offences, including a fine earlier this year. content online, and its licence to provide on-demand service, distributed television telecommunication services was revoked. According to technology website TechinAsia, the series and movies online and through an fine, if imposed, would be China’s biggest piracy- According to Chinese law, QVOD can lodge app, making around RMB 86 million ($13.9 related payout. A final outcome is expected in an administrative review within 60 days of million) in revenue. the next week. receiving a penalty notice, or appeal to a court The company’s software attracted around 300 within three months. “Our investigation found that the company million users in China before it was targeted in earned money … from illegally providing TV The case is one of several IP-related a raid by Chinese police earlier this year. plays and video programmes online without clampdowns in China in recent months. In a closed-door hearing on June 17, the authorisation from the copyright owners,” Earlier in June, TBO reported that Chinese Shenzhen Market Supervision Authority said Zeng Yaodong, director of the laws and authorities had launched a six-month (SMSA), a regulatory body, said it is considering regulation department at the SMSA. campaign to tackle online piracy. n

submit information anonymously, but has Kim Dotcom offers $5m to whistleblowers warned them to tread carefully.

Megaupload founder Kim Dotcom has offered $5 worldwide online piracy” through Megaupload, “In order to be completely safe I would advise million to anyone who can uncover “unlawful” a file-sharing site. any whistleblower not to use this tool from home or work. Go to an internet cafe with a memory conduct by the authorities prosecuting him for He denies the charges, however, arguing that alleged piracy. he is not responsible for piracy committed by stick. Don’t use your own computer or phone. You can also buy a cheap laptop or netbook just Dotcom told news website TorrentFreak that he others and that Megaupload removed links to specifically wants evidence proving that the US infringing content when asked to. for the purpose of leaking, and destroy it after you’re done.” and governments, spy and law Dotcom also told TorrentFreak that his case enforcement agencies, and “Hollywood” have results from a “corrupt contract prosecution” The $5 million reward will be available to anyone acted illegally or in a corrupt manner. carried out by the White House in return who can supply “anything useful” as well as “It is the opinion of my legal team that disclosure for Hollywood’s support of President Barack any “case-winning” information, Dotcom said, of such information would be lawful,” said Obama’s re-election campaign. although a trust account for depositing the Dotcom. “I would also guarantee that any According to the site, he is particularly interested money has not yet been set up. whistleblower coming forward would have the in evidence supporting that assertion. US authorities are trying to extradite Dotcom best legal representation at zero cost.” Dotcom has advised potential whistleblowers from New Zealand. If found guilty of charges Dotcom and several others were arrested in New to use The Guardian newspaper’s online including criminal copyright infringement, Zealand in 2012 for masterminding “massive “whistleblower tool”, which allows people to Dotcom faces up to 20 years in prison. n they not have talked to me like normal people dilution from ikeahackers.net’s use of the It is difficult to agree with Doctorow’s do without issuing a cease-and-desist letter?” mark. arguments, McLeod added. Nevertheless, Jules will move the site to another “This is pure bullying, an attempt at censorship. “There are many marks which face dilution, domain name “in time come”, eight years after I’m shocked to see that Jules has a lawyer who tarnishment or otherwise being compromised setting it up. advised him to take such a terrible deal,” he said. ... so the idea that paying for, and therefore IKEA’s actions have been labelled as “bullying” But Chris McLeod, director of trademarks at having a monopoly on a trademark, should by Cory Doctorow, who writes on the website Squire Patton Boggs (UK) LLP, said IKEA does not allow the owner to enforce it, seems naive. boingboing.net, sometimes about IP. have an arguable claim of trademark infringement. “Ultimately there is a clear distinction between “There’s no trademark violation here—the “The site uses a logo which is similar to the this type of use and ‘factual use’, and in my use of IKEA’s name is purely factual. The fact IKEA logo and combines the colours blue and view, this site is not making purely factual use that money changes hands on ikeahackers. yellow, and although the site may not strictly of the mark,” he said. net (which IKEA’s lawyers seem most upset be use ‘in the course of trade’, there are many IKEA did not respond to a request for about) has no bearing on the trademark adverts on the website which will make click- comment. n analysis. There is no chance of confusion or through income for the owner of the site.”

www.trademarksandbrandsonline.com 10 NEWS TBO Newsletter 06:14

IN BRIEF Yahoo fails to throw out trademark infringement claim again Burberry and Bentley go for .uk Search engine Yahoo has had a motion to dismiss links decreasing the value of its trademark, and a claim for trademark infringement rejected for therefore the company itself. Big brands such as Burberry, Sainsbury’s the second time in six months. and Bentley were among some of the early Yahoo sells sponsored links that appear alongside registrants of .uk domain names, helping Embroiled in a lawsuit with online automotive the searches for ‘organic’ results. The use of to generate more than 50,000 sales on the retailer Parts.com, Yahoo originally entered the sponsored links alongside normal search results is suffix’s first day. plea in December 2013, only for it to be later a common commercial practice used across most rejected. It was dismissed again on June 9. search engines, including Google and Bing. Domain registry Nominet reported that the In the suit, filed by Parts.com in May 2013, the first-day .uk sales were higher than the In the suit, Yahoo cited Section 230 of the retailer complained that the sponsored links that equivalent sales of other popular top-level Communications Decency Act as a defence that appear alongside searches for its domain name in domains (TLDs), such as .xyz and .berlin. “no provider or user of an interactive service shall be Yahoo dilute its trademark. Parts.com stated that treated as the publisher or speaker of any information The .uk TLD was launched June 10, with TV the false association creates customer confusion provided by another information content provider”. presenter Stephen Fry being the first person to and ultimately undermines the strength of its register a .uk address and a sign at Heathrow trademark. Last year, Judge Janis Sammartino at the US District Court for the Southern District of airport reading “welcometothe.uk”, which The retailer asserted six claims against Yahoo, California rejected five of the six claims made was visible to passengers in the sky. including that the search engine infringed by Parts.com, but said the first complaint of its trademark, diluted its trademark and Eleanor Bradley, chief operating officer at trademark infringement could proceed. Nominet, said: “Consumers and brands are caused injury to its business. Parts.com said alike showing their trust in .uk domains, with an aborted deal between it and AutoNation, Following the second rejection, the case will n our registration rates climbing to ten times a US car retailer, resulted from the sponsored return to court later this year. the typical daily rate.” Browsing online does not infringe

MUSHAN / SHUTTERSTOCK.COM copyright, CJEU rules

Browsing online is not an illegal act of further clarity that the decision was in line with the requirements of Article 5.1 of the reproduction of copyright material, the Court of Justice of the European Union (CJEU) European Directive 2001/29.

ruled on June 5. Article 5.1 prevents copyrighted works from Burberry joins .uk The CJEU affirmed a decision from the UK in being reproduced without authorisation. April 2013 that viewing a web page does not Reproductions, however, are deemed not to constitute copyright infringement. infringe existing copyrighted works if they are GoDaddy eyes $100m IPO “temporary”, “incidental” or “integral to the The UK court ruled in the case, Public Relations Domain name registrar GoDaddy has said it technological process”. Consulting Agency (PRCA) v Newspaper plans to raise up to $100 million in an initial Licensing Agency (NLA), that internet users The CJEU, however, said that “the cached public offering (IPO). were not obliged to enter into a licensing deal copies are normally automatically replaced It filed an S-1 registration form with the US to view published content. by other content after a certain time” and that Securities and Exchange Commission on “the technological process could not function PRCA, the largest PR association in Europe, June 9, eight years after a first proposed correctly and efficiently” without caching the represents the online news monitoring service IPO fell through. information. Meltwater, which compiles reports of online Michael Hart, partner at Baker & McKenzie LLP, The form shows that GoDaddy’s revenue content and sends them to its clients. who represented PRCA in the case, said: “This is in 2013 totalled $1.1 billion and that Meltwater had agreed to enter into a licensing a groundbreaking decision for our clients, which “bookings”—gross sales before refunds— deal with the NLA to use links in its reports to allows consumers and businesses across the EU reached $1.4 billion. clients, after the England & Wales High Court lawfully to read and browse online content.” However, the US company made a net loss of ruled in 2009 that the copying of headlines in the The case will now return to the UK Supreme $199.8 million in 2013. reports infringed the copyright of news websites. Court, which will make a final decision. n Managing 57 million domains, GoDaddy is the Meltwater, however, appealed against the JMIKS / SHUTTERSTOCK.COM leader in the domain name registrar market. decision and took it to the UK Supreme Court. It filed for an IPO in 2006 but founder Bob The Supreme Court ruled that Meltwater did Parsons pulled away from the deal because not require a licence for its reports. of market conditions, citing the “quiet period” Despite the ruling, the UK Supreme Court Browsers safe from infringement and noting that “we don’t have to go public”. referred the decision to the CJEU to gain

www.trademarksandbrandsonline.com

12 INDUSTRY REPORT TBO Newsletter 06:14

www.trademarksandbrandsonline.com TBO Newsletter 06:14 INDUSTRY REPORT 13 Fake fashion: flattery or theft?

Partnerships between fashion retailers and high-end designers, both online and on the high street, could help eliminate some of the incentive for consumers to buy counterfeit goods, although some in the industry remain sceptical. TBO investigates.

ow do you measure the success Trading online in the fashion industry is growing of a brand? For Patrizio Bertelli, every year. The British Retail Consortium chief executive of Prada, success reported that in 2013 24 percent of clothes is determined by how many and 30 percent of shoes were bought online. peopleH want to copy you. “Fake goods aren’t Increasingly consumers are turning to online totally bad ... we don’t want to be a brand nobody retailers to meet their needs. wants to copy.” Brands are following consumers online. Froese Bertelli’s comments echo pessimism within the states that “e-commerce is becoming a big force. fashion industry over the issue of counterfeiting. Shopping online has become so big that some Beginning with Coco Chanel’s repetition of 19th retailers now say their bricks and mortar stores century cleric Charles Colton’s phrase “imitation are really just part of their marketing.” is the sincerest form of flattery”, up to David Shopping online, however, is not without Wall’s report, Jailhouse Frocks, in which he argues its problems. The annual Special 301 Report that the proliferation of counterfeit products published by the Office of the US Trade could be a good thing for luxury brands, some in Representative concluded that this year the the fashion industry accept that counterfeiting is number of counterfeit goods sold online will a problem that is here to stay. surpass the number sold by street vendors. Ashlee Froese, partner at Gilbert’s LLP, however, The ease of setting up a professional looking rejects this line of thought. “Counterfeiting is a website can also contribute to the problem, big problem in the fashion industry, because Froese says. “When you’re dealing with you’re stealing the greatest asset a designer has flea markets, you at least see a person. With and that is creativity. That is their main asset, e-commerce you can buy up and close websites their main product.” in an instant.” “Don’t think because fashion is everywhere it should be precluded from IP rights,” she adds. Partnerships in retail Her argument is that this is a problem not just Commercial partnerships between retailers for luxury brands, but for all designers, small and in the high street and brand owners have large. “It is also happening to the independent produced a model for providing consumers

PHILIP HUNTON / SHUTTERSTOCK.COM designers, who don’t have the monetary power with luxury brands. Under this model, luxury to fight everything.” designers open up a new line of clothing, at an affordable rate, and sell their items through For Froese, combating counterfeiting in the established high street retailers. fashion industry is as important as it is in any other industry. According to the British Fashion For example, in 2011 fashion label Missoni Council, the fashion industry is estimated to established a commercial partnership with high be worth £26 billion ($40 billion) to the UK street retailer Target to sell a line of clothing at an economy and employs almost 800,000 people. affordable price.

www.trademarksandbrandsonline.com 14 INDUSTRY REPORT TBO Newsletter 06:14 SIPAPHOTO / SHUTTERSTOCK.COM Froese says: “What we are seeing is an alternative biggest sum awarded to a fashion designer over way to those two markets through co-branding a cybersquatting case, surpassing the $78 million and short-term licensing agreements between awarded to Ralph Lauren and The North Face a the two. You’ll also see this at stores such as year earlier. Topshop and H&M, where a named designer There is, however, reluctance within the has a limited line with one of these high street fashion industry to pursue litigation against retailers.” cybersquatted domains. Froese notes the Online solutions “anonymity” behind people running such sites can deter brand owners from believing they can New digital avenues that could potentially offer prevent cybersquatting. solutions to counterfeiting have opened up for brand owners and fashion designers, including “There is a misconception that if it is on the online partnerships between brands and retailers. internet, it is untouchable—it is unknown,” Froese says. ‘Flash sales’ websites, for example, are partnerships between retailers and designers She is clear however that litigation is not always where users are able to purchase unsold stock the best strategy for brand owners. “The first at discounted rates for a limited period of time. thing is to work out what are the best IP regimes. Because consumers have to register as members, Number two, monitor. See what is going on it means designers can get to know their “The ‘anonymity’ in the marketplace. Unfortunately, nobody is customer base on a personal level. going to be your watchdog, although there are behind people third party service providers and enterprising The Peacock Parade is a Toronto-based online companies that will assist and monitor. The retail website set up by ex-lawyer Jan Gandhi. running such sites knee-jerk reaction of sue, sue, sue may not be the It is a flash sales website that has entered best thing.” into numerous partnerships with designers can deter brand and brands. Gandhi says it is “the discerning owners from believing The way forward shopper’s answer to elite e-commerce”. they can prevent Commercial partnerships between retailers The sales on The Peacock Parade’s website last and luxury designers, both online and on the between three and seven days, with all items cybersquatting.” high street, can offer consumers big brands at reduced by up to 80 percent from their original affordable prices, thus eliminating some of the retail value. incentive to purchase counterfeit products. IP rights “Being a small company actually helps us ensure To some designers, the internet is a difficult that we are not violating existing trademarks, space to enforce trademark and design rights. Consumers can trust the authenticity of sites because we have visibility and control.” This apparent difficulty, however, does not need such as The Peacock Parade because they are to prevent designers from getting creative in authorised by designers to sell their products. Cybersquatting their approaches to enforcing existing IP rights. There have, however, been questions raised over who is responsible for the enforcement of E-commerce, however, does give the industry a For Froese, commercial partnerships trademark rights. Is it the duty of the trademark set of new problems in combating the trade of demonstrate that “there are ways to infiltrate owner to ensure that unauthorised copies of its counterfeit products. Counterfeiters are able to different price points in a legitimate way. Limited products are not sold, or should retailers, small find new portals via which to sell unauthorised licensing and co-branding with high street and large, ensure that what is traded on their sites products and reach unsuspecting consumers retailers are beneficial and keep the hype going, does not infringe existing IP rights? who are susceptible to professional looking benefiting both brands in the process”. websites. Cybersquatted sites can confuse In 2010, jeweller Tiffany sued retailer eBay for Counterfeiting is a serious problem for designers, customers by using domain names that violate trademark infringement and false advertising. big and small. Governments lose tax revenue, existing trademarks. Tiffany claimed that counterfeits of its products basic employment standards are not met and were being sold on the website and that it was Froese explains: “Cybersquatted domain names consumers could suffer health and safety the responsibility of eBay to prevent this. The are redirecting traffic that would have rightly problems with unauthorised clothing. Luxury judge ruled in favour of eBay and the decision gone to the trademark owner. They are selling brands will always attract high demand and it is has since established that the responsibility to the counterfeit products, and trading off the important that designers confront the problem stop the selling of counterfeit goods rests with goodwill of brand owners.” with new lines of clothing and sophisticated the trademark owner. In 2011 US fashion designer Tory marketing strategies. The ruling has provided space for new retailers to Burch was victorious in a $164 million If the incentive to purchase counterfeit products establish themselves within the market without cybersquatting dispute. Domain names such as could be eliminated, consumers might find that the fear of prosecution or costly procedures toryburchoutletshop.com were among 232 sites imitation is not necessarily the highest form of to monitor what is sold. “It gives us comfort in found to be selling counterfeit items. The judge flattery, but rather, to quote the philosopher John the fact that we are not responsible for policing ruled that control over the domain names be Stuart Mill, “all good things which exist are the counterfeit goods,” says Gandhi. handed to the fashion designer. It is so far the fruits of originality”. n

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“It’s not about regulation and it’s not about ownership, and it’s not about one country controlling the internet or dictating its terms.”

www.trademarksandbrandsonline.com TBO Newsletter 06:14 CONFERENCE CALL 17

ICANN meeting: turning fifty

A record number of attendees headed to ICANN 50 in London, the first time the organisation’s public meeting has been hosted in the UK capital. TBO reports on the highlights, which include Google’s story about gTLDs.

oogle didn’t always believe that new generic top-level domains (gTLDs) would revolutionise the way we use the internet. In fact, whenG the search company was first considering which suffixes to apply for, it only wanted four: .google; .chrome; .; and .android. But that was before co-founder stepped in and encouraged his gTLD team to think outside the box. QQ7 / SHUTTERSTOCK

www.trademarksandbrandsonline.com 18 CONFERENCE CALL TBO Newsletter 06:14 MAPICS / SHUTTERSTOCK.COM

“Larry said, ‘are you guys crazy? The internet He added: “Domain name industry actors now said there are now 31,000 records from 117 is changing’,” said Jordyn Buchanan, who is have a fantastic opportunity to support closed jurisdictions in the database, with 87.5 percent responsible for Google’s gTLD team, while brand applicants [whose gTLDs are not publicly of them being filed by trademark agents speaking on a panel on June 23. Rather than available] to develop services. There will be an rather than IP owners themselves. In addition, selecting just four, Page’s input ensured that extra layer on the core gTLD industry. 51,000 unique notifications have been sent out Google applied for 101 new gTLDs, ranging “If they don’t today, they will be displaced by through the ‘trademark claims’ and ‘ongoing from .app to .dog, making it the second largest startups, particularly in round two, especially notifications’ services, she said. Speaking to applicant behind Donuts Inc. with thousands of new brands. There is a TBO a day earlier, Jan Corstens, the TMCH’s project partner, said that the 31,000 figure is “New gTLDs can fundamentally reshape the massive market for additional services. Registry lower than he expected at this stage, but that by way we use the internet,” Buchanan said. “They service providers need to look at consulting and next year it should at least double. are readable, memorable and meaningful.” new software.” Contrasting their benefits with those of apps, For brand owners, all eyes were on the Intellectual Although the TMCH is “working well and he added: “Domain names provide fast, casual Property Constituency (IPC) meeting a day later, we’re happy with it”, Folens told the IPC, “a lot access to information, rather than a deep and where each attendee—whether IPC member of people don’t understand it yet, and some meaningful interaction.” or mere observer—was asked to introduce don’t know it exists”. She was responding to IPC member Anne Aikman-Scalese, With so much scepticism still surrounding the themselves to the room. who suggested that with around 15 million need for a new gTLD, it was interesting to hear trademarks registered worldwide, having just one of the biggest advocates of the domain Trademark Clearinghouse 31,000 records might suggest that the TMCH name shakeup speaking so candidly. On the Of particular interest was an update from the has attracted a lack of interest. panel, Jordan was joined by David Green, head Trademark Clearinghouse (TMCH), a central of global digital marketing at KPMG, who repository of trademark data that connects to Aikman-Scalese also claimed that some of said the “penny has dropped” that gTLDs are all new gTLD registries. The TMCH allows her clients were unaware that the ‘ongoing not just domain names. Green cited several trademark owners to register their marks in notifications’ service is not activated benefits of having the .kpmg suffix, including one place before selecting which, if any, sunrise automatically—right owners have to opt in—and authenticity, which means that clear addressing periods to partake in. It also offers a ‘trademark questioned whether the TMCH was aware of can act as a “trusted signpost” for the public. claims’ service, where domain registrants this. But Folens said she has sent out newsletters and delivered presentations explaining that it’s an Green, who was interviewed by TBO in and right owners are warned about potential opt-in service. “We’ve even contacted trademark 2013 about .kpmg, said thousands of brand cybersquatting for 90 days after a gTLD launches. owners,” she said. “We can only do what we do.” owners might apply for their own domain in Once the claims period ends, trademark owners can opt in to an ‘ongoing notifications’ service. the second round, not expected to arrive for The discussion raised an important point: why a few years. Vicky Folens, project manager of the TMCH, is the interest in and awareness of the TMCH

www.trademarksandbrandsonline.com TBO Newsletter 06:14 CONFERENCE CALL 19

“Vicky Folens, project manager of the TMCH, said there are now 31,000 records from 117 jurisdictions in the database.” still seemingly low, despite its opening for Raising concerns about the report, the US’s In an address at the meeting’s opening business more than a year ago? The answer is not GAC representative Suzanne Radell said it was ceremony, Ed Vaizey, the UK’s minister clear to anyone at this stage, although perhaps “helpful but equally alarming”. The GAC needs for culture, communications and creative as the new gTLDs continue to gain traction and “extensive” time to consider the report’s findings, industries, tried to allay any fears about the attract mainstream coverage, so will the TMCH. she said, and there should be a strong focus future of the domain name system. on the topic at ICANN’s next meeting in Los The IPC session also received some updates on “We often talk about the stewardship of the Angeles, from October 12 to 16. compliance from ICANN staff. Krista Papac, IANA function, and I always think it’s the perfect director of registry services, explained that the A representative for the European Commission, way to describe that role. It’s not about regulation organisation is interviewing prospective panellists speaking in French, added: “It’s quite simple— and it’s not about ownership, and it’s not about for the Public Interest Commitments Dispute we fully support the United States.” These views one country controlling the internet or dictating Resolution Procedure (PICDRP). The PICDRP helped ’s representative, Peter Nettlefold, its terms. It’s about nurturing the internet, will address complaints that a new gTLD registry who was chairing the discussion, to decide that supporting it, creating the environment in which might not be complying with the PICs in its registry the GAC would raise the issue with the ICANN it can develop and grow, so that it can be safely agreement with ICANN. Five panellists will be an board later that day. “This is important: we need handed on to the next generation. ideal number in total, Papac said, although more a comprehensive discussion in LA and we need “But the internet is constantly evolving and the than one could work together on a case. While to consider which mechanism to focus our way it’s stewarded has to evolve as well, and that’s ICANN is looking to create a “geographically efforts on in the meantime,” he said. diverse” panel, she claimed, most applicants have why we in the UK strongly support the moves by come from North America. Another 25 years the US to let go, if you like, of the IANA function. It’s a huge step forward in making this global Who’s who? A review of the ICANN meeting would not resource a truly global enterprise,” he said. be complete without mentioning the US Earlier in the day, ICANN’s Governmental He added: “Earlier this year the worldwide government’s decision to walk away from its Advisory Committee (GAC) convened, with web celebrated its 25th birthday: 25 years of contract (IANA) with ICANN, which allows it to an important focus on the Whois protocol. It unparalleled expansion, economic growth perform some important tasks such as delegating comes after an ICANN working group proposed and social good. ICANN has been crucial new gTLDs. There have been fears that this a detailed shakeup of Whois earlier in June. The to ensuring that success, and ICANN will be move will pave the way for controversial regimes 166-page document lists 180 recommendations, crucial to ensure that success continues for to play a stronger role in internet governance, leaving ICANN stakeholders with a huge amount the next 25 years. Tim Berners-Lee said the although others have pointed out that the US will of information to absorb. In essence, the group internet is for everyone; it is up to us to make have to rubberstamp ICANN’s proposal—and proposes that Whois data covering all domain sure it stays that way.” n names would be centralised in one database and has said it will not accept a government-led or operated by a single entity. intergovernmental organisation “solution”. The ICANN meeting ran from June 22 to June 26.

www.trademarksandbrandsonline.com 20 MARKETING gTLDs TBO Newsletter 06:14

As only a tiny proportion of the Start spreading general public is likely to know what the news new gTLDs are, marketing them successfully is very important. But who should be doing this, and what can they do? Andy Churley investigates.

n the world of the new generic top-level domains (gTLDs) we find ourselves in the middle of a marketing controversy. Although we are no longer constrained byI addresses such as .com or.net—around 600 publicly-available gTLDs are coming on to the market—how many people are actually aware of the changes underway? And how many of them actually realise the significance this change will have on their businesses, brands or even personal browsing habits? If I were to do a straw poll it wouldn’t surprise me if fewer than one in 100, or even one in 1,000, people would have heard about the new gTLD programme. Why is this? ICANN The internet’s name governing body ICANN set the application fee for each new gTLD at $185,000, and received nearly 2,000 applications, so it must have taken more than $350 million in fees alone. Surely ICANN could spend some of its funds on marketing? Apparently not. ICANN appears to be implying, by its lack of promotional activities, that it is down to the wider gTLD community to educate the market and drive new gTLD adoption with internet users. Registries When considering registry marketing activities, it is crucial to note that registries are not allowed to sell directly to consumers. All registries have

to go through the ICANN-accredited registrar VLADISCHERN / SHUTTERSTOCK

www.trademarksandbrandsonline.com TBO Newsletter 06:14 MARKETING gTLDs 21

channel—this inherently affects the marketing their customers about what domain names usually squeezed since they have a middle activities of the registry. to hold or acquire and under which suffix. man who takes a cut, leaving less money for There are broadly four types of new gTLD They concentrate on providing value- marketing activities. applicant, and each has different marketing and added advice to their corporate clients, Stepping up business drivers. which can then manage a large portfolio of domains in a number of different suffixes. Who should shoulder the burden of marketing Single-string applicants They have already The ‘broadcast’ marketing that corporate new gTLDs? Using the ‘AIDA’ marketing model invested heavily in acquiring one registry and, registrars do is for customer acquisition rather having in effect put all their eggs in one basket, (Awareness, Interest, Desire, Action), things may than market education, and will be focused will therefore promote that asset with all the become a little clearer. on their unique portfolio management financial and creative resources available to Awareness ICANN is the only body with the capabilities rather than new gTLDs per se. them. Expect to see any well-funded single- remit, reach and resources, accumulated from string applicants such as DotClub push the Retail registrars These have large and diverse application fees, to raise awareness of the new boat out with their marketing efforts, until customer bases, whose average portfolio size gTLD programme sufficiently to grab the the money runs out. is only a few domain names. These registrars attention of internet users globally. have a menu of domain names to offer their Portfolio applicants These include Famous Interest Registries want to spend their marketing customers and should be shouting about Four Media, Uniregistry and Donuts. They budgets to differentiate their suffixes from the any new ones that are on offer. However, are forced to take a more measured approach other 600 gTLDs in a market where people are just six months or so into the roll-out, there to promoting their gTLDs. Almost all of already aware of what a new gTLD is and why them have to juggle their marketing spend are more than 250 new gTLDs on offer. they might want one. This is what registries with holding back money to acquire as many To put this in perspective, this is almost should be doing, rather than spending time, of the gTLDs that they are fighting others for. the same number as all the gTLDs and effort and budgets on trying to explain what a Spending may be on buy-outs, or private or new gTLD is. With no marketing investment ICANN auctions. Expect to see less in the by ICANN, the registries’ job is made doubly way of direct marketing spend until all their “ICANN is the only difficult and doubly expensive. possible gTLD registries are secured. body with the remit, Community applicants This group are Desire With creating desire, we are moving into focused on a narrow subset of internet users reach and resources to the realm that includes the registrars’ marketing and will be hell-bent on educating that subset raise awareness of the efforts. This phase is about converting an alone, as the wider internet population will interested party into a potential buyer of a specific not be eligible to purchase domain names new gTLD programme domain. Here, traditionally there is room for in their registries. It may seem obvious, but sufficiently to grab the registry/registrar collaboration, cost-sharing and the operator of .london is not likely to be co-marketing. spending much on promoting the domain in attention of internet Action This phase sits squarely with the registrars. Toronto, for example. users globally.” It is their sole goal to convert a potential buyer Brand applicants These applicants are into a domain owner. Good registrars have this using their new gTLD(s) for internal brand down to a fine art. protection or support marketing purposes country-code TLDs ever launched before (and not to sell domain names to consumers). the programme. This means it is an almost Investment needed They need to integrate their registries with impossible task for retail registrars to find If there is no investment in marketing then the their existing marketing strategies and the resources to market every suffix to its entire chain breaks down, or at least slows to a continuing go-to-market activities. Many maximum potential. And with little in the crawl. Just like a farmer trying to grow his crops, brand owners are looking at new gTLDs as way of data—and certainly no crystal ball— we know the soil is good (more than 200 million a long-term investment so it may be a while to predict the potential winners and losers, domain names are already registered), but if the before we see a .nike or .bmw involved in some retail registrars are falling back on the field is not ploughed and ready to accept the seed, aggressive advertising campaigns. tried-and-tested method of seeing which the crops will not grow as plentiful or as quickly, registry will pay them the most to feature and the farmer cannot reap his reward. Registrars their suffixes. Similarly, the domain name industry cannot Registrars have a direct connection with the Wholesale registrars. These have an added expect the new gTLD programme to achieve end user of a domain name. Therefore, they layer of complexity. They are themselves one rapid adoption without investment in marketing, are often seen as the mouthpiece of the domain step removed from the registrant, since they and ICANN needs to step up before it can expect name industry. There are three principal types work through a network of domain name the other actors to play their part. n of registrar. resellers. The wholesale registrar is in a similar Corporate registrars They look after large position to the registry operator, selling to the Andy Churley is chief marketing officer at Famous portfolios of domain names for corporate registrant through a third party. In addition, Four Media. He can be contacted at achurley@ customers, providing strategic advice to wholesale registrars’ gross margins are famousfourmedia.com

www.trademarksandbrandsonline.com 22 CYBERSQUATTING TBO Newsletter 06:14 AUREMAR / SHUTTERSTOCK.COM

How to win a URS dispute

The URS allows trademark owners to quickly tackle clear-cut cases of cybersquatting, but its high burden of proof is just one hurdle to overcome. David Weslow explains what we can learn from some of the early cases.

The first decision under ICANN’s new only clear cases of trademark abuse,” says the right to or interest in the domain name; and Uniform Rapid Suspension System (URS), procedure. Use of the URS is mandatory for all (iii) that the domain was registered and is issued in September 2013, involved a new gTLDs, and a number of ccTLD and other being used in bad faith. country-code top-level domain (ccTLD) incumbent registry operators have voluntarily URS complaints must be filed electronically from a ccTLD registry—.pw—that had adopted it. and complainants are limited to 500 words voluntarily adopted the URS. Since then, The URS is a complement to existing RPMs of argument. It is also important to note approximately 70 URS complaints covering such as the Uniform Domain-Name Dispute- that the burden of proof is higher under the a wide range of new generic TLDs (gTLDs) Resolution Policy (UDRP) and national laws URS than the UDRP or most court actions, have been filed. such as the US Anticybersquatting Consumer and that the complainant must satisfy the The URS was created to provide a lower- Protection Act (ACPA). A URS decision can be three URS requirements with clear and cost rights protection mechanism (RPM) obtained in as few as 14 days. convincing evidence. for trademark owners to pursue the most Complainants in URS cases must establish the A successful URS proceeding will result in egregious cases of cybersquatting. following: (i) that the registered domain name the suspension of the domain name for the “The URS is not intended for use in any is identical or confusingly similar to a word term of its registration. The domain name will proceedings with open questions of fact, but mark; (ii) that the registrant has no legitimate resolve to a webpage stating the following:

www.trademarksandbrandsonline.com TBO Newsletter 06:14 CYBERSQUATTING 23

“The domain name you’ve entered is not had non-trademark uses and that there was available. It has been taken down as a result an “absence of any evidence that the domain “The examiner of dispute-resolution proceedings pursuant name is currently being used in a manner that denied the to the Uniform Rapid Suspension System is exclusively or strongly associated with that procedure and rules.” trademark”. complaint, noting In contrast to the remedies available In a particularly informative ruling, the that no evidence under the UDRP or national laws such as examiner in a case involving “bbva.land” the ACPA, suspension is the only remedy denied the URS complaint despite evidence had been submitted available under the URS and a domain that the domain name had been used to display demonstrating the name cannot be cancelled or transferred as a monetised parked page that contained links a result of a successful proceeding. relating to the complainant’s trademark. relationship between The domain name owner filed a response to the the trademark Case studies complaint, providing information and evidence owner and the URS In one of the earliest decisions to deny to explain the reasons for its registration of the a URS complaint, the examiner was domain name and the significance of the .land complainant.” ruling in a dispute over the domain name extension in relation to its business plans. The “aeropostale.uno”. The examiner found that examiner, noting the high burden of proof the complainant Aeropostale Procurement under the URS, held that the second and third already lost six separate URS cases involving Co., Inc. failed to establish that it owned a elements of the URS had not been satisfied by the domain names “spanx.clothing”, “dana. trademark registration that was identical or clear and convincing evidence. holdings”, “bbva.careers”, “oliverywyman. confusingly similar to the domain name. In a very recent denial of a complaint, the careers”, “josephabboud.clothing”, and Although the complainant submitted examiner, ruling on “finn.sexy”, emphasised the “mcgraw-hill.careers”. evidence of applicable trademark potential non-trademark uses of the asserted URS examiners appear initially to be more registrations, at face value the registrations trademark as a common name, as well as the sceptical of complaints involving non-coined were owned by entities other than the absence of any evidence showing that the trademarks given the possibility that the named complainant. domain name had been used specifically to marks may be subject to legitimate non- The examiner denied the complaint, noting target the complainant or its trademark. trademark related uses. Because of the high that no evidence had been submitted The domain name had been used to display burden of proof under the URS, examiners demonstrating the relationship between the generic parked page links, and had been also appear likely to deny complaints where trademark owner and the URS complainant. offered for sale, but the absence of evidence the domain name has not been actively demonstrating that the complainant or its Similarly, in a case involving the domain used. The same rule applies to cases where mark had been specifically targeted by the name “wolfram.ceo”, the examiner denied no evidence is submitted to show that the the complaint on the grounds that the domain name owner was deemed dispositive. domain name has specifically targeted the complainant Wolfram Research, Inc. had not The examiner also denied the respondent’s complainant or its mark or where insufficient submitted evidence establishing a relationship counsel’s claim that the complaint was brought evidence is submitted to establish ownership between the trademark owner and the URS in an abuse of the proceeding or that it of the asserted trademark. complainant. contained material falsehoods. In a case involving the domain name Evidence needed The URS is a valuable new option for brand “branson.guru”, the examiner denied owners when faced with clear-cut cases of The URS complaints that have been denied the complaint on the grounds that the cybersquatting. Early decisions under the to date show the importance of submitting complainant, entrepreneur Sir Richard URS demonstrate that the intentionally high evidence that will be viewed by an examiner as Branson, had not established by clear and standards of the URS are being applied by very clearly establishing the three elements of convincing evidence either the second or examiners. the URS. third elements of the URS. Therefore, the URS may not be appropriate Given its word count and file upload The examiner noted in particular that the limitations, the URS electronic filing system for all cases of cybersquatting, and the UDRP parked page content that had been displayed may present challenges for the submission and national laws remain available for those at the subject domain name did not include of evidence and arguments, but it is very cases where the substantive or procedural any references to the complainant, and that important for counsel nonetheless to make limitations of the URS could make pursuit of no specific evidence of bad faith registration sure that all necessary information and such a complaint ill-advised. n or use had been provided. documentation has been submitted. Evidence Case references are available on request to Similarly, the examiner, in a complaint that the domain name owner has engaged the author. about “heartland.holdings” and “heartland. in a pattern of cybersquatting has been ventures”, afforded particular weight to the found to be particularly persuasive by David Weslow is a partner at Wiley Rein LLP. He possibility that the trademark in question also URS examiners and one individual has can be contacted at: [email protected]

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