TM Office Comes to CA. - 20081 Shootout at the ICANN Corral: Domainers vs. Trademark Owners vs.com ®

TM Office Comes to CA. - 2008 1

Shootout at the ICANN Corral: Domainers vs. Trademark Owners

vs.com ®

TM Office Comes to CA. - 2008 2

Mike Rodenbaugh

Mike Rodenbaugh was formerly Yahoo!’s primary attorney in charge of intellectual property enforcement.

In 2007, Mike started his own firm assisting intellectual property owners.

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David J. Steele

David J. Steele specializes in Internet law at Christie, Parker & Hale in Newport Beach. Mr. Steele also teaches Trademark and Internet Law at Loyola Law School.

An expert on Internet law and technology, Mr. Steele has successfully handled hundreds of Internet cases, typically for famous trademark owners.

Mr. Steele holds a B.S., Electrical and Computer Eng., CS Polytechnic University, Pomona, and a J.D. from Loyola Law School

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John BerryhillJohn Berryhill has represented domain name registrants and trademark claimants in numerous UDRP proceedings and federal court proceedings under the ACPA. John has been a longtime advocate for the rights of domain registrants in ICANN working groups and task forces relating to intellectual property and other domain policy issues, and is a former treasurer of the Registrar Constituency.

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Outline of Presentation The Big Picture Domain Tasting, Kiting and Front-running UDRP

Cases of Note Related Issues of Note (i.e. rule changes) Practice Pointers

ACPA Cases of Note

ICANN policy developments Q&A

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The Big Picture

What’s going on - from a TM owner’s point of view Increased cybersquatting (due to tasting and

kiting) By more sophisticated and nefarious squatters Falsifying WHOIS or moving overseas to avoid

ACPA

What’s going on - from a Domainer’s point of view Over-reaching TM owners Claims against generic domain names Questionable ethics in prosecuting complaints

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Domain Name “Tasting” Register and “taste” name for 5 days Return domain names for full refund Measure traffic via Pay Per Click ads Keep profitable domain names Monetize domain names

Misdirect customer Get paid by advertisers (e.g., Google’s

AdSense)

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TM Office Comes to CA. - 2008 9

Domain Tasting - Scope

March 2005 – Nearly 43 million .com and net domain names registered.

Only 2.5 million names were deleted that same month.

In April of 2006, 35 million names registered.

Of those names 32.7 million were deleted within the 5-day Add Grace Period

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TM Office Comes to CA. - 2008 11

Domain Name Kiting

Repetitive Tasting Registrars and registrants taste (monetize)

domain names in bulk and delete them Then, using an automated process, they

automatically re-register them... again and again.

Often through affiliated entities, in effort to evade detection

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Front-running Aka Domain Name Spying

Registrar obtains information that a domain name is of interest to a consumer

They monitor the WHOIS queries Then the Registrar “registers” the domain

name if the consumer doesn’t immediately register it

This prevents the consumer from registering the domain name at another registrar

Also prevents cybersquatters from registering

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Domain Registrants’ view

TM Owners believe they have monopolies in “dictionary words” or phrases

TM Attorneys engage in unethical tactics to attempt to entrap domain registrants

Internet Service Providers and others are competing for advertising revenue

ISP Use of Non-registered Domains

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TM Office Comes to CA. - 2008 15

Review of AvailableDomain Name Remedies

Uniform Dispute Resolution Policy (UDRP) Arbitration procedure mandated by ICANN via

domain name registration agreement Rapid Time Scale – No Monetary Damages

Anti-cybersquatter Consumer Protection Act (ACPA) – 15 USC 1125(d) in personam in rem

Jurisdictional Issues

Many cybersquatters are either overseas or lie about being overseas…

hard to track down Creates jurisdictional issues under

US law US Courts will not enforce foreign marks

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UDRP Elements Domain Name is identical or confusingly

similar to a trademark in which Complainant has rights

Respondent has no legitimate rights in the Domain Name bona fide use or preparation to use prior

to notice of a dispute Domain Name was registered and used in

bad faith demonstrated specific intent

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Recent UDRP Cases of Note Reseller makes bona fide offering and

thus legitimate use? NASCARtours.com – Respondent

prevails because he offers ‘only tours of NASCAR events’ and provides prominent disclaimer

GE-Merlin.com – Complainant prevails because of likely initial interest confusion, despite sale only of Merlins, and prominent disclaimers

Recent UDRP Cases of Note MySpace.co.uk (Nominet) –

Complainant prevails though domain registered six years before MySpace existed, but was used only for PPC ad site

TheEconomist.com – Respondent prevails as he swears he had never heard of the magazine when he registered the domain, and showed a picture of “Alan Greenspan – The Economist of the Century” at site

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TM Office Comes to CA. - 2008 20

UDRP Related Issues of Note

Each UDRP Provider implements its own procedural rules

Naming RespondentsIf “privacy service” is listed as the registrant, registrar will change the owner when a UDRP complaint is filed –requiring an amendment to the Complaint.

Supplemental Filings

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UDRP Practice Pointers Always request transfer; never

cancel Treat the Complaint like a motion for

summary judgment Follow up to make sure the name is

transferred and that it doesn’t resolve to the old website The registrar is responsible for

transferring the domain name

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ACPA Cases of Note Vulcan Golf et al. vs. Google et al. (USDC N.D. IL,;

Case No. 07-Civ-3371) Class action against registrants, parking companies,

and advertisers Motion to dismiss denied in part (RICO and some state

claims dismissed; federal TM claims remain)

Dell and Yahoo! et al v. BelgiumDomains et al (USDC S.D. FL; Case No. 07-Civ-22674)

Civil case for cybersquatting, counterfeiting, TM infringement

Federal seizure raid conducted with US Marshals Pre-judgment asset freeze (+1 million domain names

and millions of dollars)

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Policy and Legislative Developments

Coalition Against Domain Name Abuse (CADNA)

Internet Commerce Association (ICA)

ICANN Registries (not VeriSign) – deterring tasting / kiting ICANN – “taxing” tasting / kiting through registration

fees ICANN – studying “front-running”

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Questions?

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Contact Info

Mike [email protected]

David [email protected]

John [email protected]