TBS and TNT announced this week that they’ll be streaming online, and ABC announced that it’s offering unaired episodes online of the sitcom ““Don’t Trust the B---- in Apartment 23”. Which lead me to wonder… why aren’t these channels streaming on .TV?
Isn’t .TV the most logical, intuitive cyber home for television channels? How come the networks didn’t jump to apply for this generic Top Level Domain (gTLD) ?
Oh, right - because the islands of Tuvalu, a Polynesian nation,"owns" the country code Top Level Domain or ccTLD (it essentially turned .TV over to a VeriSign company in 2002). And, while anyone can register a second-level domain in .TV, it just isn’t quite the same as having a whole .TV just for traditional channels or 24-hour streaming of a single series, is it?
Of course, as time passes, television itself could become obsolete; kids today are already watching shows on both traditional television sets AND wireless devices. By the time the next generation rolls around, television ‘sets’ may have gone the way of the record player.
Whether and how we’ll move from watching television to watching wireless devices is not the only behavioral shift in entertainment: Online streaming lends itself to different viewing patterns altogether since there’s no pre-set schedule and multiple episodes are made available at once. The producers of the online versions of “All My Children” and “One Life to Live” recently realized this and reduced the rate at which episods were released (because, presumably, people preferred to watch more than one episode in a sitting but couldn’t watch as many in one sitting as was required to keep up with the four-episode a week pace).
Netflix’s release of its original series “House of Cards”, starring Kevin Spacey, seemed to deliberately exploit the back-to-back viewing trend when it released all 13 episodes of the first season at once. LA Biz called this ‘binge viewing’ (which certainly resonates with 20 and 30 somethings whose college experiences notoriously involve binge … imbibing).
Even with clear examples of how we’re moving from TV to streaming, CNN Money insists that we’re not as close to ditching our televisions as we think, warning “before you start cutting your cord, know that true online TV isn't quite here -- not yet, anyway.”
Apparently blood may not be thicker than water. The estate of the late Malcolm McLaren was recently unsuccessful in recovering the domain name malcolmmclaren.com from a cousin of one of Mr. McLaren’s former girlfriends through UDRP action filed with the National Arbitration Forum (NAF).
In his decision, the Panelist noted that the issues raised in the case, specifically a business/contractual dispute, are outside the scope of the UDRP, and did not appear to constitute a case of cybersquatting. The panelist cited Love v. Barnett, FA 944826 (NAF May 14, 2007), in which the case was dismissed because the dispute “appears to hinge mostly on a business or civil dispute between the parties.” Several other prior case examples were cited, but the message is clear: the UDRP is not a family counselor.
Cases such as this highlight anew the need to be strategic and selective in filing UDRPs where clear cybersquatting exists. Although you can’t pick your family members, try to make good decisions when it comes to girlfriends and UDRP filings.
Haas Automation, Inc. recently won a major victory in the fight against cybersquatting by successfully recovering 17 domain names in a single decision. The CNC machine tool builder’s recent haul included domain names such as haasvalves.co and haasrentals.co.
The National Arbitration Forum (NAF) panelist found that the domain names are confusingly similar to the Complainant’s mark, the Respondent has not established rights and legitimate interests in the domain name and the Respondent registered and uses the domain names in bad faith. In an apparently conspicuous show of its guilt, the Respondent failed to even submit a response in the proceedings. The Respondent was even found to have had prior knowledge of the Complainant’s brands and trademarks, in addition to prior UDRP decisions against the Respondent.
Although we frequently present cases in which complaints were denied, we love seeing instances of resounding victories for Complainants against repeat-offending cybersquatters. Way to go Haas.
The International Trademark Association's (INTA) 135th Annual meeting in Dallas, Texas, wraps up today after five days of discussion among intellectual property leaders from around the globe – in fact, more than 8,000 of them.
It’s no surprise that one of the major topics on the minds of trademark owners was the impending launch of new gTLDs. After all, it's an issue that will impact all businesses. Trademark owners, whether or not they applied for a new gTLD, have to consider how much of their budget they are going to allocate to defensively registering domain names and which trademarks are most important to protect.
Six FairWinds staff members were on the ground in the Lone Star State, working to alleviate some of the burdens trademark owners will face as new gTLDs start going live. FairWinds staff recognized that many companies are still behind the curve when it comes to preparing for the massive gTLD expansion coming this year. Without a clear strategy for how to handle the rapid-fire open gTLD launches, a company could find itself exposed to dangerous trademark infringements, or overspending on value-less domains.
Many trademark owners who have applied for a gTLD face the added hurdle of ICANN's Registry Agreement (RA). Past gTLD launches have been largely limited to open, generic terms - .com, .edu, .org, .biz, .info – terms that have nothing to do with trademarks. But the draft Registry Agreement doesn't necessarily fit the business model of a trademarked gTLD name. For example, handing over the rights of a generic registry, in the event of that registry’s failure, is one thing. It’s an entirely different story if a .BRAND is asked to turn over the operation of its trademarked gTLD (e.g., .Safeway) on a site populated with trademarked material. The failure to differentiate between business models is just the sort of thing that makes trademark owners and trademark attorneys cringe.
FairWinds has written to ICANN about the need for a second draft Registry Agreement for what we refer to as Internal Registries (registries such as .BRANDs that do not plan to sell secondary level domains to the public). Gathering more support for a new Registry Agreement should make it more difficult to ignore.
Help Scout may need to start scouting for some new domain names. The online customer support solutions company recently unsuccessfully attempted to recover the domain names helpscout.com and help-scout.com.
The National Arbitration Forum (NAF) panelist found that the domain names are both confusingly similar to the Complainant’s mark and that the Respondent has not established rights and legitimate interests in the domain name. However, because no trademark rights for the Help Scout name existed at the time the domain names were registered, no evidence of bad faith usage of the domain names by the Respondent was found. As such, Help Scout was not able to meet the third requirement of the UDRP (bad faith by Respondent) and the Complaint was therefore denied. It is rather surprising that reverse domain name hijacking (RDNH) was not found as it so often is when a Complainant’s trademark rights don’t pre-date the creation of the domain name.
As we noted last week, cases such as this underline the importance of promptly registering trademarks, presenting clear and incontrovertible evidence of infringement in the complaint, and carefully selecting which domain names to pursue via UDRP action. Experienced UDRP counsel can help complainants, such as Help Scout, select winnable cases and solid domain name advisors can assist with longer-term digital strategy.
Type www.z10.com into your browser and you’ll arrive at an Amazon page on which “Global Mobiles” sells unlocked BlackBerry Z10 phones. What? Did you expect to be directed to a BlackBerry (formerly Research In Motion) site just because the Z10 has been touted as the phone that will help make or break the struggling company? What happened?
A savvy domain speculator realized that his or her domain name had become a hot commodity well after the domain was registered, and it could be monetized in Amazon's affiliate program where commissions could be earned on Z10 sales driven to the popular ecommerce site via Z10.com. According to the Whois, the domain was created over 12 years ago, and was transferred to a registrant in Hong Kong in 2007. The Z10 phone, however, was only introduced to the U.S. market this year.
It’s possible that the original owner decided to grab Z10.com because it sounded like a model of something before BlackBerry even conceived of the Z10 phone. Plus, it's well known that ALL two and three character .COMs and probably a good many four character .COMs have been gobbled up by speculators just waiting for some new whatchamacallit to debut on the market. Z10 sounds an awful lot like a car model – and if you type “Z10 car” into a search engine, you’ll get hits for BMW’s Z10 and Toyota’s Z10 Soarer (a model sold in Japan in the ‘80s).
“This is fairly typical cyber-speculation activity,” said Steve Levy, FairWinds' Intellectual Property Attorney. “Creative domain speculators will come up with creative names absent of a known product name. If one of those names is later adopted by a company as a brand, it can create a tough situation since there were no trademark rights at the time the domain was created and Uniform Domain-Name Dispute-Resolution Policy (UDRP) arbitration panels must reject claims when a domain name was not originally registered in bad faith. At that point it's time to explore other options such as an anonymous offer to buy the desired domain – preferably before the new product launches and price goes sky high.”
There are some lessons here for companies managing the acquisition of domain names associated with the launch of a new product. Before a new brand is publicly announced, many companies will register the most obvious defensive domains. But if the product name is neither totally distinctive, nor incorporates a protected pre-existing trademark, and a domain name was registered well in advance of any trademark rights, it may be that acquisition is the only path forward apart from selecting another trademark with an available domain.
This past Christmas was my first at FairWinds. I won’t lie, I’m a bit of a grinch - and I was not prepared for how seriously the founding partners and my coworkers would take the holidays. In addition to the company holiday dinner, Secret Santa exchange, and awesome tech gifts from Phil & Josh, we each received a bamboo tube containing conspicuously hip black sunglasses.
I must have had a bewildered look on my face upon opening the gift, because Phil Lodico explained that a former employee, Vincent Ko, had started eco-friendly Panda Sunglasses in the spirit of TOMS shoes "buy one, get one" model and that FairWinds wanted to support this socially-conscious start-up by buying everyone in the office a pair.
I was reminded of this conversation when I read a BrandChannel article today on TOMS shoes and the other, similar brands inspired by TOMS founder Blake Mycoskie’s model:
“What Mycoskie may not have bargained for was the amazing race he started for companies to become socially conscious. For example, the TOMS model directly inspired Vincent Ko, Luke Lagera, and Michael Mills to start Panda Sunglasses. Making their sunglasses from sustainable bamboo, the trio also help fund eye exams and free eyeglasses through the TOMA Foundation. Ko told USA Today, ‘We figured if we could make a fraction of the impact that Blake Mycoskie made with a different item, we'd be doing a good job.’”
But the Christmas gift of Panda sunglasses was not the only experience I thought of when I read the BrandChannel article. I also thought of Georgetown University’s participation in “One Day Without Shoes.” You can watch a brief video on the event here. I also reviewed the TOMS campaign in my digital strategies class, which I am taking as a graduate student in Georgetown’s School of Continuing Studies, and my program also participated (the following post is to the Facebook page for the Masters in P.R. and Corporate Communications):
How does TOMS get people so engaged to the point that they would take off their shoes and allow their bare feet to be photographed!?
In addition to fulfilling the desire of many to “do good”, these companies are thoroughly and strategically digital. Take a look at the pages of photos on the One Day Without Shoes photo wall, the website space devoted to the winner of the Barefoot Challenge (Sweet Peas Boutique - which can now boast about this on its social media platforms), and the offer of a “tool kit” for those who want to drive participation.
Perhaps following TOMS's lead, Panda's website, wearpanda.com, engages fans, customers, and interested users through videos, photos, and Twitter (#wearpanda).
One company has gone so far as to become the digital platform for companies and individuals “doing good” through their products: www.good.is. This website cleverly takes advantage of Iceland's ccTLD, .IS (you can find out more about this trick here).
TOMS, Panda Sunglasses, and Good.is all demonstrate how powerful digital strategy can be, especially when there is a socially responsible offering involved. I think that the TOMS website has worked its magic on me, too. I'm thinking FairWinds should start participating in TOMS One Day - after all, nothing looks better with eco-friendly sunglasses than bare feet.
Apparently, a dime really doesn't go that far anymore. Chinese online gaming company Tencent Holdings Limited's recent effort to recover the domain name tencentgames.com, was thwarted by a losing UDRP case.
In its decision, the one-member UDRP Panel noted that there was no conclusive evidence of bad faith usage of the domain by its owner. In addition, the findings noted that Tencent registered its G TENCENT GAMES trademarks a full year after the domain name was created, and that there was no clear evidence that the Respondent could have known about Tencent's "Tencent Boston" gaming company (that was in the United States) at the time it acquired the domain. Specifically, the panelist noted that the Complainant was not able to meet the third requirement of the UDRP (bad faith by Respondent) and so the Complaint must therefore be denied. It is rather surprising that this wasn't determined to be a case of reverse domain hijacking, as it so often is when a Complainant’s trademark rights don’t pre-date the creation of the domain.
Cases such as this underscore the importance of carefully selecting which domain names to pursue UDRP action against, promptly registering trademarks, and presenting clear and incontrovertible evidence of infringement in the case proceedings. Of course, an experienced UDRP counsel could have guided the Complainant to a different strategy but it’s game over for now – insert another quarter (or dime) to continue playing.
Go ahead – type will.i.am into your browser bar. Ever the master of personal branding, William Adams (a.k.a. will.i.am) has cleverly registered the subdomain “will” in the domain name “i” which is registered to i.am.symbolic, LLC within the Armenian country code top-level domain .am.
As we’ve noted before, country code TLDs have been used in all sorts of clever domain names, from bit.ly (Libya’s country code) to Universal Pictures’ despicable.me (Montenegro’s country code). WordPress founder Matt Mullenweg took advantage of Trinidad & Tabago’s ccTLD when he registered ma.tt.
Expect to see more of these clever, easy-to-“direct-navigate” domain names starting in the late summer to early fall of this year. No, we’re not predicting an explosion of new countries in Eastern Europe or island nations in the Caribbean – but we are awaiting the launch of ICANN’s new gTLD program through which companies have applied for and will be, in many cases, granted generic and brand top level domains. These new top level domains will offer practically infinite opportunities for masters of branding – personal or otherwise – to create clever domain names. “
The introduction of more top-level domains could change the way we navigate the Internet if enough companies and individuals catch on to intuitive domain registration like janedoe.ninja or johnsmith.dad,” says FairWinds Co-Founder Josh Bourne. “It may be so much easier to remember these addresses that choppier, less intuitive addresses -- like those with many backslashes and subdomains -- will fall into relative disuse.”
Politics and domain names often walk hand in hand these days. Organizing for Action, a non-profit organization aligned with the Democratic Party, was recently unsuccessful in recovering two domain names containing its name: organizingforaction.com and organizingforaction.org. In addition, the domain name organizingforaction.net was registered by a third party who indicated that he would refuse to sell or transfer the domain to the organization. Initially, the domain pointed to the home page for the National Rifle Association ("NRA") and now points to a YouTube video of Ben Carson's speech at the National Prayer Breakfast.
In its decision, the three-member UDRP Panel noted that while Organizing for Action did satisfy the requirement that the domain names are "confusingly similar, if not legally identical", to its name, it did not have a trademark registration and insufficient time had passed since the first use of the name to create common law trademark rights. The Panel also noted that the "non-distinctive nature of the expression" was a significant factor in its decision. In addition, it is interesting to note that the Panel cited one of the WIPO Panel Views on Selected UDRP Questions despite the fact that this case was filed with the National Arbitration Forum.
Based on the above factors, the Panel ordered that the complaint be denied. Organizing for Action will, for the time being at least, rely on its https://my.barackobama.com/page/s/organizing-for-action microsite. It will be interesting to see if Organizing for Action pursues other domain names ahead of the 2014 Congressional races and if its pending trademark application is granted, perhaps giving it a renewed opportunity to go after against these domain names again.