Domain Names and Cybersquatting Protecting Your Brand and Marks From Online Infringement presents A Live 90-Minute Audio Conference with Interactive Q&A Today's panel features: Paul D. McGrady, Jr., Greenberg Traurig, Chicago Karol A. Kepchar, Partner, Akin Gump Strauss Hauer & Feld, Washington, D.C. Ira J. Levy, Partner, Goodwin Procter, New York Tuesday, June 16, 2009 The conference begins at: 1 pm Eastern 12 pm Central 11 am Mountain 10 am Pacific The audio portion of this conference will be accessible by telephone only. Please refer to the dial in instructions emailed to registrants to access the audio portion of the conference. Check back later for additional handouts. CLICK ON EACH FILE IN THE LEFT HAND COLUMN TO SEE INDIVIDUAL PRESENTATIONS. If no column is present: click Bookmarks or Pages on the left side of the window. If no icons are present: Click View, select Navigational Panels, and chose either Bookmarks or Pages. If you need assistance or to register for the audio portion, please call Strafford customer service at 800-926-7926 ext. 10 DEFINITIONS Domain Name: a "nickname" of a location on the Internet that is easier for humans to remember than the actual internet protocol address, e.g. <amazon.com> ICANN: ICANN is the Internet Corporation for Assigned Names and Numbers located in Marina del Ray, California. ICANN is tasked with the safety and security of the Internet. Top Level Domain or TLD: This refers to the content of the domain name which resides on the right of the "dot", for example, .com, .net, .de. New TLD's: A new round of top level domain names which can contain either generic term or branded content on the right hand side of the "dot", e.g. .soda or .coke. Second Level Domains: the content in a domain name directly to the left of the "dot", e.g. "amazon" is the second level in <amazon.com>. gTLD or "generic top level domain": domain names which are governed by ICANN contract and have "generic" material to the right of the "dot", for example .com which is short for "commercial." ccTLD or "country code top level domain": domain names which are governed by national registries and reflect the abbreviation for that country on the right hand side of the "dot", for example, .hk (Hong Kong) or .ro (Romania). Some ccTLD registries operate in cooperation with ICANN and some do not. Some ccTLD registries have adopted the UDRP and some have their own dispute resolution policies and some have no dispute policies at all. UDRP: UDRP is short for the Uniform Domain Name Dispute Resolution Policy promulgated by ICANN. In order to prevail in a UDRP complaint, a complainant must show that they have trademark rights which correspond to a domain name, that the registrant has no rights or legitimate interests in the domain name and that the domain name has been registered and used in bad faith. WIPO: WIPO is short for the "World Intellectual Property Organization", a part of the United Nations. WIPO, located in Geneva, Switzerland, is one of several UDRP providers and shares a nearly even market share with the NAF. NAF: NAF is short for the National Arbitration Forum, located in Minneapolis, Minnesota, is one of several UDRP providers and shares a nearly even market share with WIPO . Cybersquatting: Registering domain names which consist of the brands of others for a bad faith purpose. Although cybersquatting takes many forms, historically cybersquatters registered domain names containing the brands of others in an attempt to sell them back to the brand owner at a premium. In more recent years, cybersquatters have registered such domain names to profit from the PPC traffic generated by the domain names. PPC: PPC is short for pay-per-click. Revenue generated from PPC advertisements associated with domain names which have been cyber squatted upon fuels much of the cybersquatting industry. This process is often referred to as “monetization.” ACPA: ACPA is short for the "Anti-cybersquatting Consumer Protection Act", a U.S. federal law prohibiting cybersquatting. Although the elements of the ACPA are similar to those of the UDRP, the remedies available under the ACPA are more significant, including up to $100,000 in potential statutory penalties. Registrar (gTLD): organizations which are accredited by, and under contract with, ICANN to register domain names with registries on behalf of registrants. Registry (gTLD): organizations which are under contract with ICANN to provide registry services for a particular TLD. For example, VeriSign is the registry for all .com domain names. Registrant (gTLD): the person or organization that contracts with a registrar to have that registry obtain a domain name from the registry for use by the registrant. WHOIS: the public record of who owns a domain name. Privacy or Proxy Service: an organization that contracts with a registrant and agrees to populate the WHOIS record with its information rather than the information of the registrant. Host: the organization upon whose servers the content that resolves to a particular domain name resides. DNS Records: The name of the Host's servers. Their identification can be found at the bottom of the WHOIS record. © 2009 McGrady on Domain Names EnforcingEnforcing TrademarksTrademarks AgainstAgainst InfringementInfringement byby DomainDomain Names:Names: TheThe LitigationLitigation OptionOption KarolKarol A.A. KepcharKepchar JuneJune 16,16, 20092009 -053880.0003 HOUSTON 233229 v1 AA DomainDomain NameName isis anan AddressAddress È Fundamentally, a street address for a location on the Internet, for example: http://www.akingump.com È Domain name ownership is first and foremost a contractual right (there may also be a trademark right, but not necessarily so) -2- 59999.0000 HOUSTON 234886v1 WhatWhat isis aa ““TrademarkTrademark””?? The term trademark includes any word, name, symbol or device, or any combination thereof, used to identify and distinguish a person’s goods, including a unique product, from those of others, and to indicate the source of the goods, even if that source is unknown. 15 U.S.C. § 1127 -3- 59999.0000 HOUSTON 234886v1 TrademarksTrademarks TheThe InteriorInterior DécorDécor ofof RAINFORESTRAINFOREST CAFECAFE TheThe INTELINTEL ToneTone LogoLogo TheThe scentscent ofof plumeriaplumeria onon yarnyarn -4- 59999.0000 HOUSTON 234886v1 DomainDomain NamesNames areare TrademarksTrademarks IfIf…….... • They Function to indicate Source or Sponsorship of the Products, Services or Business. •That usually means that the domain name corresponds to an existing mark. •“From Scratch” – Amazon.com domain name corresponds to Amazon.com mark in content of site, ads etc. •Compare: flowers.com resolves to site of 1-800- FLOWERS.COM (a registered trademark) -5- 59999.0000 HOUSTON 234886v1 Registering/ProtectingRegistering/Protecting DomainDomain NamesNames AsAs TrademarksTrademarks È You cannot register URLs (xyz.com), unless also used as a MARK . È Generally, TLD’s serve no source indicating function -- therefore, their addition to an otherwise unprotectable term typically cannot render it protectable. -6- 59999.0000 HOUSTON 234886v1 AssessingAssessing thethe TrademarkTrademark Threat/DamageThreat/Damage ofof DomainDomain NamesNames È Is the registered domain name active? È If active, is the website content DAMAGING – e.g., competitor, counterfeits, pornographic? È What is the TLD for the domain name? Is it a .com or .es? È Priorities -7- 59999.0000 HOUSTON 234886v1 CausesCauses ofof Action:Action: DomainDomain NameName LitigationLitigation The Umbrella of “Unfair Competition” • Keyword Advertising • Metatag Usage • Pop-up advertising • Cybersquatting • Trademark Infringement -8- 59999.0000 HOUSTON 234886v1 Domain Name Disputes: The UDRP Option Ira J. Levy Michelle King (Summer Associate) June 16, 2009 ©2009. Goodwin Procter LLP UDRP Overview ü Background ü Procedure ü Common Concerns What is UDRP? • The UDRP (Uniform Domain Name Dispute Resolution Policy) was adopted in late 1999 by ICANN (the private authority responsible for the administration of certain Internet technical parameters) to offer an alternative to litigation in local courts to settle complaints by trademark owners about cybersquatting. To Whom Does UDRP Apply? • All accredited registrars in the .biz, .com, .info, .name, .net, and .org top- level domains. Benefits to Using UDRP • Speed • Ease of Filing • Informal Proceedings • Experts Making the Decisions • International in Scope • Relatively Low Cost Various Providers • World Intellectual Property Organization (WIPO) • National Arbitration Forum (NAF) • Asian Domain Name Dispute Resolution Centre (ADNDRC) • Czech Arbitration Court (CAC) UDRP — Elements • Alternative dispute resolution where third party asserts that – A domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights” – The registrant has “no rights or legitimate interests in respect of the domain name” – The domain name was “registered and is being used in bad faith.” UDRP—Identical/confusingly similar • Usually not an issue. • Panel will ignore addition of: – .com or other TLD – generic descriptive word – omission/addition of letters or characters UDRP—Legitimate Interest • Demonstrable preparations to use domain name or name corresponding to domain name in connection with a bona fide offering of goods or services – Use of a domain name for purposes of offering search engine services with “pop-up” advertisements and “sponsored links” to competitors of the complainant, is not legitimate or bona fide under the Policy. 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