The High-touch Legal Services® Blog • For Startup Companies » Domains

Gingrich Domain is Newtered – But the UDRP Probably Won’t Help

Dana — Tue, 10 Jan 2012 00:41:22 +0000

In How to Defeat a Cybersquatter, I wrote about using ICANN’s comparatively quick and inexpensive Uniform Domain Name Dispute Resolution Policy (UDRP) to defeat cybersquatters. The domain name NewtGingrich.com recently was squatted upon – but I doubt that Newt will be able to use the UDRP successfully to recover that domain.

Gingrich Communications had owned NewtGingrich.com since 2004, but apparently forgot to renew the domain name in August 2011. By December 2011, it was owned by American Bridge 21st Century, a progressive Political Action Committee. (In the interim, it was owned by entities in Chihuahua, Mexico.)

If Gingrich Communications tried to recover NewtGingrich.com, I believe it would have at least two serious problems:

It would have to show that “Newt Gingrich” is a trademark or service mark. I have seen no evidence to support such a proposition. There is a registered trademark for Gingrich Productions, but not for Newt Gingrich. More fundamentally, I believe that “Newt Gingrich” does not constitute the name by which any products or services have become known to the public.
It would have to show that American Bridge is using the domain in bad faith – which would be difficult to do, given that American Bridge redirects NewtGingrich.com to a variety of sites that poke fun at Newt (such as Tiffany’s where he had a $500,000 line of credit) and other Republicans, rather than taking advantage of his name for financial gain.

The morals of this story:

Don’t forget to renew your domain name before it expires.
The UDRP won’t necessarily help everyone whose domain has been cybersquatted.

Photo credit: Wikipedia

Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

ICANN to Help Trademark Owners Prevent Cybersquatting

Dana — Tue, 15 Mar 2011 01:51:04 +0000

In an interview in today’s San Francisco Chronicle (“Rod Beckstrom, CEO of ICANN, talks about new domain names“), the CEO of the Internet Corporation for Assigned Names and Numbers stated that ICANN will create a global marks database to help protect trademark owners against cybersquatting.

The database will be developed in conjunction with ICANN’s forthcoming implementation new generic top-level domains (gTLDs). ICANN CEO Rod Beckstrom is quoted in the Chron article as saying (emphasis added):

We have agreed to create a global marks database. By marks we mean trademarks and service marks. … If you get a document to show that you own the trademark or service mark, you get to put it into a global database. Once it’s in the system, you will be notified if anyone tries to register your name. That’s the first time in human history that a global marks database has been created to notify owners of events that could affect them.

This is great news for trademark owners. Historically, ICANN’s protection has resided in its Uniform Domain-Name Dispute-Resolution Policy, which allows trademark owners to recover domain names from those who have registered them abusively, such as cybersquatters.

With the new database, trademark owners will be notified when a cybersquatter tries to register the domain – offering the owner of a mark an opportunity to prevent an infringement-related domain registration rather than pay to fix it after the fact.

How to Defeat a Cybersquatter, Part 2: Going to Court

Dana — Wed, 16 Feb 2011 04:26:06 +0000

In How to Defeat a Cybersquatter, I wrote about ICANN’s Uniform Domain Name Dispute Resolution Policy. The UDRP provides a quick, inexpensive way to recover a domain name from a cybersquatter (someone who has obtained a domain name that is the same as, or confusingly similar to, a trademark or service mark that you own). However, if you want to recover money, you will have to go to court.

Before proceeding further, let me be clear: I think lawsuits should be avoided whenever possible. As a trial lawyer told me many years ago, “Litigation is a terrible way to run a business.” Unfortunately, litigation sometimes is necessary.

The Anticybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)) was enacted in 1999. Simplifying a bit, ACPA allows the owner of a mark to bring a civil action against an individual or entity that (i) has a bad faith intent to profit from that mark and (ii) registers, traffics in, or uses a domain name that is identical or confusingly similar to that mark.

ACPA then goes on to provide a non-exclusive list of factors that can be considered in determining bad faith intent. These include, for example intellectual property rights of the alleged cybersquatter; any prior bona fide use of the domain name; intent to divert consumers in a manner that could harm the goodwill represented by the mark; and an offer to assign the domain name for financial gain without bona fide use of the domain name.

Another benefit of ACPA recently was established by the U.S. District Court for the Western District of Washington in Microsoft v. Shah, et al.: Those who help the cybersquatter (“contributory cybersquatters”) can be sued, as well.

Check out all posts about cybersquatting.

Photo credit: Robert Linder via stock.xchng

Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

How to Defeat a Cybersquatter

Dana — Mon, 19 Jul 2010 20:24:17 +0000

Someone has obtained a domain name that is the same as, or confusingly similar to, a trademark or service mark that you own. How can you take the domain name from this “cybersquatter”?

When he registered the domain name, the cybersquatter (the Registrant) agreed to ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP).

Under the UDRP, you (the Complainant) will be required to prove the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which you have rights; and
(ii) the Registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.

The following are examples of registration and use in bad faith – the facts on which UDRP decisions often turn:

(i) circumstances indicating that the Registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Registrant has registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
(iii) the Registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.

The UDRP does not necessarily require that either party be represented by a lawyer. However, Complainants, especially, with their marks and businesses at stake, often decide to retain legal counsel to ensure that all Rules are complied with and the complaint cites appropriate facts and authorities.

Related posts:

Check out all posts about cybersquatting.

Licensing Trademarks? Think about Domain Names, Too

Dana — Mon, 18 Jan 2010 20:35:32 +0000

The December 2009 issue of les Nouvelles, a publication of Licensing Executives Society International, has an interesting article about the interplay between domain name disputes and trademark licensing.

“WIPO Domain Name Cases Offer Trademark Licensing Lessons,” by Hee-Eun Kim, an LLM student in Munich, Germany, starts by describing the Uniform Domain Name Dispute Resolution Policy (UDRP) and the role of the World Intellectual Property Organization (WIPO) in resolving disputes under the UDRP.

Based on WIPO decisions arising from a variety of contractual relationships among UDRP parties, the article offers recommendations for both licensors and licensees of trademarks.

For trademark licensors:

Devise a domain name strategy for your trademarks – which top level domains, which combinations and variations of marks, which languages, etc.
Regulate domain names in trademark license agreements.
Recognize that domain name registrations may make trademarks more attractive.
Monitor domain names for trademark infringement.

For trademark licensees:

When registering a domain name, make a good-faith effort to avoid infringing anyone’s trademark rights.
Acquire a domain name that incorporates a licensed trademark only if you can satisfy the following criteria: (i) you are offering the goods or services in question, (ii) you are using the website to sell only the trademarked goods or services (not your own goods or services or those of a third party), (iii) the site discloses your relationship to the trademark owner, and (iv) you are not depriving the trademark owner of the opportunity to acquire a domain name that reflects the mark.
If you want to bring a UDRP complaint against a third party based on the licensed trademark, obtain the licensor’s consent to or involvement in the complaint.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

Who is the Master of Your Domain? (or, How to Prevent Domain Name Hijacking)

Dana — Sat, 14 Nov 2009 02:24:02 +0000

Earlier this year, I helped a client recover an Internet domain name that a disgruntled former employee had hijacked shortly after his employment had been terminated.

I prepared a complaint under ICANN‘s Uniform Domain-Name Dispute-Resolution Policy (the “UDRP”) and filed it with an ICANN-approved dispute-resolution provider.

Seven weeks later, the provider ruled in the client’s favor, and the domain name was returned. We were pleased, of course, but my client had to invest a lot of time, anxiety and money to achieve a successful resolution.

My experience in this matter suggests that there are simple, low-cost steps any business can take to protect its domain names against hijacking:

List a responsible, high-level individual, rather than front-line staff, as the administrative contact on the domain name registration.
Ensure that the company, rather than any individual employee, is recorded as the owner of the domain.
Use domain locking, if your registrar offers it, to minimize the likelihood that a third party will be able to modify your registration.
Keep registrant, administrative and technical contact information up to date, especially in the event of a staff departure.
Establish procedures for a high-level individual to control domain passwords, and change those passwords immediately before terminating any staff who know them.
Keep track of expiration dates so you can renew domains on time rather than lose them.

Check out all posts about cybersquatting.

Basketball Star Rescues 800 Domain Names from Cybersquatter

Dana — Mon, 26 Oct 2009 23:45:45 +0000

Chris Bosh

Cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from a trademark belonging to someone else. NBA superstar Chris Bosh recently won a major victory against a serial cybersquatter.

On September 24, the U.S. District Court for the Central District of California granted an order requiring that Luis Zavala transfer all of his domain name holdings to Bosh. (A list of those holdings is available on this blog’s Downloads page as “Chris Bosh – Domain Names Awarded” – just sign up using the drop-down list in the sidebar.) This award is particularly significant because it is, to the best of my knowledge, the first time that a party has been awarded domain names that profit from third parties’ trademarks.

Bosh offered to make the domain names available to the applicable trademark owners at no charge through his social media firm Max Deal Technologies.

Check out all posts about cybersquatting.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

Watch Out for Asian Domain Name Scams!

Dana — Fri, 11 Sep 2009 18:10:04 +0000

Twice within the past 24 hours, a client has contacted me with concerns about trademark protection. In each instance, the concerns were caused by an e-mail that offered specified domain names in Asia. I will describe the e-mails in detail so you will know to be on guard if you receive anything similar:

The subject line includes terms such as “copyright” or “intellectual property.”
The text indicates that the sending company, an Internet domain registrar located in Asia, has received a request to register domain names with country codes in Asia that are similar to a “trademark” (more precisely, a domain name) that you own. For example, if you own , the e-mail might state that there are requests to register and .
The e-mail then offers you an opportunity to protect your trademark by buying the Asian domain names yourself, rather than letting them be purchased by the third party. However, to take advantage of this opportunity, you must act quickly.
The individual ostensibly sending the e-mail has an Americanized name, such as “John Zhou” or “Adam Hao”.

Do not waste you time replying – this e-mail is a scam! Based on Internet research, I determined that even if the sending company really is an Internet registrar, the price for the domain names will be way too high. If you really want the domain names, you might as well buy them through your existing Internet service provider at a substantially lower price.

Which brings us to a larger point: You should buy a country-specific domain name only if you consider it important to do business in that country. And if the country is that important, you should look into registering your trademarks there, too.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.