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Overwhelming Demand: Update on the Sunrise B Period for .XXX
Mon, 11/07/2011 - 18:39 — Josh Bourne — PermalinkICM Registry, the company administering the .XXX top-level domain, has announced that it received 78,938 applications during the Sunrise B Period, which ended on Monday, October 31st. During the Sunrise B Period, trademark holders from outside the adult entertainment industry had the opportunity to preemptively register their trademarks in order to block them from being registered as .XXX domains. (Sunrise A gave trademark owners within the adult industry the opportunity to register domains before ICM opens the .XXX floodgates to the general public.) Given the overwhelming response, ICM and its IP Rights validation company will likely be processing the trademarks and applications through the end of November. As such, the results of the Sunrise B period will not be available until early December.
Before .XXX, the most recent big Sunrise rush occurred during the launch of .ASIA in 2008, when trademark owners filed just over 30,000 registrations. With over double that number of applications filed, the .XXX Sunrise B registrations dwarf those of .ASIA and highlight how seriously brand owners view the .XXX space as a potential source of damaging trademark infringement and brand dilution.
Atari Tries to Power-Up, Comes Off as Total n00b
Mon, 08/29/2011 - 16:51 — Samantha Demetriou — Permalink.png)
When dealing with domain names that contain a brand or trademark and are owned by third parties, one of the first things brand owners must consider before determining a course of action is how those domains are being used. Many times here at FairWinds, we see domains containing our clients’ brand names hosting pay-per-click (PPC) ads or being used for other obviously trademark-infringing purposes. In those instances, the process of recovering those domain names on behalf of our clients is usually fairly straightforward.
However, we also occasionally see these kinds of domain names being used in ways that cause serious headaches for brand owners, but technically might constitute fair use under copyright and trademark laws. One example is what we call gripe sites, like IHateYourBrand.com or YourBrandSucks.com. While the content on these sites can wreak havoc on brand image, under the right circumstances it may constitute free speech and, as I mentioned, might be protected under copyright and trademark laws.
Similarly, fan sites can also constitute fair use. Fan sites that host no commercial content typically don’t cause brand owners quite as much grief, because their owners use them to sing the praises of a brand, product or service. One example is StarbucksMelody.com, a blog that describes itself as “An unofficial site, for any and all Starbucks enthusiasts everywhere!” The site is run by a woman named Melody Overton, who is a coffee aficionada and a Starbucks customer. She has she never worked for Starbucks, she just digs coffee.
Fan sites pop up around all kinds of brands and products. Unsurprisingly, the Internet is home to a rich ecosystem of fan sites dedicated to video games. There are even fan sites devoted to gaming systems that predate the Internet (and even the author of this post). That’s right, I’m looking at you, Atari.
While fans have a ton of love for the gaming company, Atari doesn’t seem to have a whole lot of love for the websites they build as platforms for their fandom. According to gaming sites, Atari has been on the digital warpath, sending letters to the owners of fan sites demanding that they shut the sites down and turn over the domain names. One recipient and self-proclaimed “retro-gaming nut” Andrew Davie, who runs a site at Atari2600.org, posted a farewell message on the site’s homepage where he pointed out, “The ’2600 platform has been near and dear to my heart for a long time.”
Here at FairWinds, we know better than almost anyone how important domain names and websites are in protecting brands and trademarks. But Atari’s aggressive "game-over" tactics may ultimately cost it some very loyal and long-time fans.
The Packers own “Titletown” – Just Not Titletown.com
Tue, 08/16/2011 - 09:15 — Josh Bourne — Permalink
The NFL’s preseason began on Thursday, which means we’re only a few weeks away from football season. And in my house, that means Packers games.
The Packers have won more championships than any other team in the NFL. This phenomenon has led to the town of Green Bay being known as“Titletown”; in fact, no fewer than 17 local Green Bay businesses use the term Titletown in their names.
This raises some red flags for the Packers, who own a trademark for the term Titletown. When they initially filed in 1990, it was to use the term on apparel like shirts and hats, but in November 2010, the team expanded the trademark to cover other businesses like resorts, conference centers, restaurants, bars, concerts and others, as well as an array of real estate services.
The Packers spend a good deal of time policing their trademark rights to “Titletown,” even convincing a local distillery to open a new bar and restaurant under the name “Green Bay Distillery” instead of “Titletown Distillery,” as it had originally planned to do. So needless to say, I was very surprised to find out that the Packers don’t own the domain name Titletown.com.
The domain was first registered in 1996, and currently does not host any content. According to the Wayback Machine, in the past the domain has pointed to a site with links to Packers news as well as to merchandise. We’ve seen other examples of UDRPs where past content has been factored into the Panel’s decision, meaning the Packers could have a fighting chance at recovering the name via UDRP.
Playing Politics Online
Tue, 06/28/2011 - 11:25 — Liz Sweezey — PermalinkBack in February, Steve Levy blogged about Sarah and Briston Palin’s applications to trademark their names being held up. Last week, according to the Wall Street Journal, the mother-daughter duo successfully completed the trademark application process. Barring any last-minute objections or bureaucratic hiccups, the marks SARAH PALIN and BRISTOL PALIN should be registered in three months.
The Palins’ applications got me thinking about politicians, trademarks and, of course, political domain names, which the Coalition Against Domain Name Abuse researched last fall leading up to the midterm elections. The Republican Party is already gearing up to challenge President Obama in next year’s presidential election, and candidates are beginning to announce their intentions to run. One example that came to my mind recently was Jon Huntsman, former governor of Utah and U.S. Ambassador to China, who announced his plan to run for the GOP nomination last week. Unfortunately, he does not own the domain name JonHuntsman.com or JonHuntsman.org. Instead, he uses Jon2012.com.
In my opinion, one of Barack Obama’s strengths during his candidacy was his web presence. In addition to owning BarackObama.com and Obama.com, his Facebook page currently has over 21 million Likes. Huntsman, on the other hand, has a fairly unmemorable domain for politics (saying “Jon 2012” out loud sounds like a Bible verse) and a Facebook page with fewer than 10,000 Likes.
While an intuitive domain name and a popular Facebok page does not necessarily translate into a successful campaign, it will be difficult for Huntsman or any Republican candidate to compete with Obama’s online reach. We’ll just have to wait until November to see how that plays out.
Update on UDRP Review
Fri, 06/03/2011 - 16:14 — Josh Bourne — PermalinkBack in April, I published a post explaining the push within the ICANN community to review, and potentially reform, the Uniform Domain Name Dispute Resolution Procedure (UDRP). On Wednesday, an article in World Trademark Review reported that ICANN has published a report asserting that a full-scale review of the UDRP is not recommended.
This comes as hugely positive news for certain constituencies, including many trademark owners and UDRP providers, especially the World Intellectual Property Organization (WIPO). Earlier this year ICANN hosted a webinar to discuss the topic of UDRP review, and the majority of participants raised strong opposition to the notion.
The Not So Sweet Side of Cupcakes
Wed, 03/23/2011 - 16:21 — Samantha Demetriou — PermalinkIn my opinion, the worst thing that can happen to a 
cupcake is its frosting falling off. But after reading this article in today’s New York Post, I’ve realized that trademark infringement can be an equally harsh cupcake woe.
The current owners of the famous New York sweet spot Magnolia Bakery, Steve and Tyra Abrams, are suing the bakery’s co-founder, Jennifer Appel, for alleged trademark infringement, unfair competition and interfering in a contract. The Abramses claim that Appel, who sold her share of Magnolia in 1999 and opened up a rival shop, deliberately helped Greek socialite Nicole Kotovos open a knockoff of Magnolia Bakery in Athens, Greece, by giving her Magnolia’s recipes and business secrets.
Appel denies any such foul play, and in turn is actually suing Kotovos, claiming that Kotovos tricked her into divulging the secrets. Appel says she had no knowledge that Kotovos was planning to use the name “Magnolia” and had actually warned her against using it. According to Kotovos, Appel had acted as a consultant to open her store in Athens, but upon learning of Magnolia Bakery’s lawsuit, Appel terminated her relationship with Kotovos.
And just to fill out this cupcake lawsuit triangle, Steve and Tyra Abrams filed for an injunction to prevent Kotovos from using the domain name MagnoliaCupcakes.gr. Interestingly, Magnolia.gr and MagnoliaBakery.gr both remain available, but the article did not mention whether the injunction covered those domains as well. The Abramses are also suing Kotovos in both Greece and New York, and attempting to get her bakery closed.
It turns out nothing can kill a cupcake craving like a torrid legal battle.
GAC – ICANN Meeting: Second-Day Recap
Tue, 03/01/2011 - 16:02 — Josh Bourne — PermalinkIn spite of whatever progress may have been made between the GAC and the ICANN Board yesterday through the mutual exchange of questions, the groups seem to have backtracked somewhat today. Day two of the meeting between the groups brought a discussion of trademarks, and disappointingly, that discussion hit a standstill after only ten minutes. Yesterday, the Board had issued some questions to the GAC, who declined to consult further with the Board before answering those questions fully. After some frustrating back-and-forth, the groups abandoned any discussion about trademarks. After a three-hour break, the groups had concluded that the trademark issue should be pushed off until tomorrow.
This was supposed to be a two-day meeting between the GAC and the ICANN Board, with a third day designated to compose a statement regarding the outcome. This is a huge letdown to trademark owners and members of the IP constituency, who traveled to Brussels specifically to hear the two groups discuss – and hopefully reach some sort of agreement on – the myriad trademark-related issues that remain to be resolved. Many will have to return home tomorrow, including some members of the GAC, meaning trademarks could once again be put off.
While the Board was able to agree to certain requests made by the GAC, today was a letdown overall. Many ICANN stakeholders and members of the Internet community as a whole were expecting more concrete answers to their looming questions to come out of this session in Brussels. Unfortunately, today only seemed to highlight ICANN’s longstanding problem with effective governance.
Start Your Engines
Mon, 02/14/2011 - 12:13 — Phil Lodico — Permalink.jpg)
Last week I read about this case and found it fascinating.
The car you see pictured here is the Ferrari F150, the Italian carmaker’s 2011 Formula 1 racecar named to honor the 150th anniversary of Italy's reunification. You may be thinking that the name “F150” sounds familiar. That’s because it is also the name of Ford’s full-size pickup truck. And Ford is less than happy that Ferrari is using the same name.
According to The Guardian, Ford sued Ferrari for trademark infringement, eventually forcing Ferrari to use the car’s full name, “Ferrari F150th Italia.” But Ford didn’t stop there – the company is also suing Ferrari for its registration of the domain name FerrariF150.com under the Anticybersquatting Consumer Protection Act (ACPA) and is seeking $100,000 in damages. Ford is basically trying to crush Ferrari on this one.
If you’re scratching your head trying to picture Ferrari as a cybersquatter, get ready to be thrown for another loop: Ford doesn’t own F150.com or FordF150.com. FordF150.com points to a fan site, but F150.com resolves to a pay-per-click site.
And what does Ford make of Ferrari's Facebook page for the F150?
Seeing brand owners go after cybersquatters whose sole business is cybersquatting is standard for us, but seeing two high-profile brand owners fight it out over a domain name is something that doesn't happen everyday.
Brand dilution is a big deal, but so is lots of free press for both companies.
Palin Trademark Applications Held Up
Fri, 02/11/2011 - 17:20 — Steve Levy — PermalinkThe issue of celebrities being able to enforce their rights to their names, when the names are copied in a squatted domain, comes up fairly frequently in my work. However, in order to reclaim a squatted domain, through legal channels it’s critical that a celebrity be able to show that their name has trademark rights. Recent attempts to register former Alaska governor Sarah Palin’s name as a trademark serves as a great case study on the requirements that must be met before a famous individual can officially trademark his or her name.
On November 29, 2010, the U.S. Patent and Trademark Office (USPTO) issued an office action rejecting a trademark application for the phrase SARAH PALIN in relation to public speaking services and providing a website featuring information about political issues (Ser. No. 85170226). The USPTO Examiner stated that the specimens submitted along with the application did not show that the mark had been used in connection with the services listed. Specimens included screenshots of Palin's Facebook page, a Fox News story announcing her joining the network as a contributor, and a copy of Ms. Palin’s book "Sarah Palin: America by Heart." The office action also notes that Ms. Palin did not, herself, sign the trademark application nor a consent to the filing of the application.
Similarly, an application for the name BRISTOL PALIN claiming motivational speaking services (Ser. No. 85130638) was initially rejected because Bristol Palin's consent was not on file and the submitted specimen was just a page with the mark typed on it. Both applications were filed by Thomas Van Flein of the Clapp Peterson Van Flein Tiemessen & Tho firm in Anchorage, Alaska.
It is a well-settled principle of trademark law that a name must be used in connection with the public offering or sale of some kind of product or service in interstate commerce in order to meet the requirements for trademark registration. Simply being famous is not enough to merit a trademark of one’s name. This is one big reason that well-known political or business figures have had difficulties in registering their names as trademarks – they have not actually sold anything to the public under their own names.
Here, if former Alaska Governor Palin and her daughter can submit proof that they use their names, not merely as public figures, but as true brands in commerce, they should be able to get their trademarks registered just as so many other famous speakers, authors and performers have done before them. It will be interesting to follow these applications to see what sort of additional specimens are filed and whether the USPTO eventually deems them worthy of being registered as trademarks.
Generic Domains and the UDRP
Mon, 11/15/2010 - 15:14 — Steve Levy — PermalinkA controversial domain name dispute over ErgonomicDesigns.com recently came to my attention. Ergonomic Designs Limited, the Complainant, filed the complaint with the World Intellectual Property Organization (WIPO) against Stylish Solutions Limited, the Respondent. The result of the dispute was a transfer. As someone who is very familiar with and sees domain name disputes on a daily basis, the troubling part of this case is the glaring fact that the Complainant does not have a registered trademark for the term ERGONOMIC DESIGNS.
The Complainant claimed that it had acquired common law trademark rights, but the company was only created three years ago, which is likely not enough time to establish common law trademark rights in such a generic term. Despite this fact, the Panel found that the term ERGONOMIC DESIGNS had acquired secondary meaning based on the evidence provided, which included the Complainant’s business registration under that name; its primary domain, ErgonomicDesigns.co.uk; mentions of the Complainant in magazines; and web search statistics showing that 54,000 visitors had searched for the Complainant using those terms.
In my opinion, the Panel made an error by exceeding the scope of its mandate. This type of decision should have been left to the UK or EU Community trademark offices. The Complainant does not hold a trademark for the term ERGONOMIC DESIGNS, therefore, under the UDRP, the complaint should have been denied despite all of the evidence provided by the Complainant.
By single-handedly determining that the Complainant had developed secondary meaning in its arguably generic name and awarding a transfer of the domain, the Panel granted the Complainant a de facto trademark. In doing so, the Panel denied the Respondent ownership of a name which might very well have been rejected by a trademark office examiner since generic words can not gain trademark rights regardless of how extensively they are used. In the Respondent’s own words, the words ERGONOMIC DESIGNS “cannot be the subject of a trademark because they describe goods or services and do not serve to identify a particular brand … the term is wholly descriptive”.
It is unfortunate that the Panel did not pay more heed to the Respondent’s argument because, upon review of these facts, it is clear that this is a case of what has earned the names “Reverse Domain Name Hijacking” (RDNH), which is an abuse of the Uniform Domain Name Dispute Resolution Policy (UDRP). This is not to say that the Complainant’s argument rose to the level of a false assertion of trademark rights, I simply think that it took a very long stretch of the imagination for the Panel to come to the decision that it did. It is my conclusion, therefore, that the Panel should have rejected the claim without prejudice and suggested that the Complainant re-file the complaint after it had passed muster with a trademark office and obtained a registration.
For another perspective on this decision, check out Michael Berkens' post over at The Domains.
