A major theme to come out of INTA's 2013 Trademarks and the Changing Internet Landscape Conference in New York City was the value of cooperation between legal and marketing departments in the development and execution of a company's digital strategies.
Yahoo!'s J. Scott Evans spoke of the benefits of looping in the right decision makers, so that one person isn't taking on the whole risk and responsibility of trademark portfolio management. Marketing as well as legal departments should take ownership of a strategic campaign and its implementation.
Chris George, of the Intel Corporation, pointed out that business development and PR should also be in the loop on legal's social media enforcement strategies, so that a company can more accurately weigh the risks of trademark infringement against the risk of a PR disaster. Fan sites - which sometimes use trademarks in their domain names or in the images on their website - may not be good targets for reclaim if reclaiming results in backlash from the website's owner or other fans of the site.
FairWinds' perspective has always been that this type of inter-departmental cooperation is necessary for an effective domain name strategy. Risk appetite, marketing plans, product launches, and consumer behavior are important considerations in deciding which domain names are key for a company to own. Add to this list the impending launch of thousands of new gTLDs, and it's more important than ever to get marketing, legal, IT, and domain name expertise in the room together –even before you have figured out how ICANN regulations and policies will come into play.
Popular meme-generator Cheezburger Inc. filed a UDRP complaint against rival site WeKnowMemes over its primary domain name WeKnowMemes.com with the World Intellectual Property Organization (WIPO) citing infringement of one of its registered trademarks. It was up to WIPO to determine if the Complainant actually had rights to the disputed domain name or if the UDRP complaint was a thinly veiled bid to take down a competitor.
Cheezburger filed the UDRP complaint primarily on the grounds that the disputed domain name was identical or confusingly similar to its registered mark KNOW YOUR MEME. Additionally, the fact that both parties provide similar content might confuse Internet users searching for the Complainant's content.
To clarify, both sites are active generators of "memes," which are broadly defined as "concepts that spread from person to person via the Internet." Memes can take the form of videos, images, written content, virtually anything that can be shared by Internet users. Cheezburger Inc. is most famous for its "lolcats" memes and is widely seen as one of the foremost meme producers on the web.
WeKnowMemes.com, though, is also a popular page, snagging almost 200,000 unique visitors in the month of February, according to Compete.com. The Respondent defended itself by saying that the established mark is made of generic terms and expressly states that it does not cover all uses of the term "meme.
In the end, the WIPO Panelist denied the complaint. It said that the question of whether or not the domain name is identical or confusingly similar to the established mark is a close call but it found that the Respondent had a legitimate interest in the domain and that it did not have a bad faith intention in registering and using it. This case highlights the fact that a UDRP complaint is not the appropriate avenue for attempting to quell a rival site, especially without strong evidence.
Disney filed a UDRP complaint with the National Arbitration Forum (NAF) against Greg Beinstock over 13 domain names related to a number of its titles, including Mickey Mouse, Tangled, and Aladdin. The proceedings were mostly standard for a complaint against an alleged squatter using marks for PPC sites, save for a notable exception.
It turns out that, while Disney owns the key marks for the primary terms in the majority of the disputed domain names, the most basic Aladdin mark it owns is for ALADDIN'S MAGIC CARPET RIDE and a French trademark for ALADDIN. The disputed Aladdin domain names featured no mention of the ride but rather referenced an Aladdin musical. In January, Disney announced plans to bring Aladdin to Broadway, but it clearly has not yet obtained any trademarks related to the show.
The Respondent, probably sensing that the other domain names were surefire transfers to the Complainant, singled out the Aladdin domain names in his filing, stating that they are not identical or confusingly similar to Disney's mark and pointing out the 219 U.S. trademark applications containing the word Aladdin. He also states that he had been trying to create a stage version of Aladdin prior to Disney's announcement, although he provides no facts to back this claim up. In his decision, the Panelist explains that while all of the other domain names are sufficiently similar to the Complainant's marks, the Aladdin ones are not, and he orders them to remain with the Respondent.
Panelists are required to examine each domain in a complaint individually and some are not willing to transfer certain domains even if others at issue are clearly cybersquatted. As such, this case should be a lesson to all brand owners that, regardless of your company's size or influence, pre-existing trademark rights are essential in UDRP proceedings. Proof of rights to important marks must be fully prepared before considering a UDRP complaint.
In 2002, according to a recent article in the Wall Street Journal, Red Sox president Larry Lucchino apparently remarked that “The evil empire extends its tentacles even in to Latin America” in reference to the Yankees’ signing of Jose Contreras, a Cuban pitcher.
Rather than dispute the association with the villainous Star Wars society, the Yankees embraced it – so much so that, when a company named Evil Enterprises wanted to register “Baseball's Evil Empire” for merchandising purposes in 2008, counsel for the Yankees filed a objection on the grounds that – yes – with regard to baseball teams, this term applied to the Yankees and the Yankees only. To support this evil claim, the attorneys for the Yankees cited articles from the last ten years in which the New York City team was referenced as the evil empire and also explained that the team played music from the Star Wars movies during their games.
This month, a panel of judges decided the fate of “Baseball’s Evil Empire” – in favor of the Yankees. One has to wonder if the panel of judges wrote the following sentences with smiles on their faces – or signed the decision with maniacal laughter: "In short, the record shows that there is only one Evil Empire in baseball and it is the New York Yankees," wrote the judges. "Accordingly, we find that [the Yankees] have a protectable trademark right in the term . . . as used in connection with baseball."
Setting aside the entertainment value of this case, it is an important one for those who may want to, say, start a business that sells merchandise with catchphrases or titles associated with and implicitly embraced by a sports team, celebrity, or organization. Then again, empires - evil or not - don’t always win when fans take their brand image in unintended directions: in the late 1990s, the U.S. Court of Appeals in New York City ruled that the term “hog”, a widely-used and accepted nickname for Harley Davidson motorcycles, could be used by a repair shop named the Hog Farm because the Hog Farm’s use of the term was a parody. You can even read about the decision on the Hog Farm’s website, on which “Battle Won” Hog Farm t-shirts are sold as well.
Today, harried law school applicants looking to meet the March 1 deadline for law school applications have been navigating to LSAC.org, home to the Law School Admissions Council, only to be met with this page:
Rather than this one:
The website has experienced intermittent problems today, frustrating visitors and undercutting the reputation of the LSAC as applicants take to social media platforms to vent.
This is a prime example of why having a strong, stable domain name strategy - one that ensures that your company delivers consistent, expected, and authentic content to its online audiences – is critical. Failing to provide your services through a reliable, online storefront has very real consequences, as LSAC and law school applicants learned the hard way.
Here’s another example of why filing UDRP complaints should be left to the experts. Even lawyers experienced in trademark litigation may not know their way around this tricky field.
At first glance, it would appear that Eyemagine Technology would have a good chance in its UDRP complaint, filed with the World Intellectual Property Organization (WIPO), against Clough Construction concerning the domains Eyemagine.com and Eyemagine.info. However, the Complainant made a number of critical errors that jeopardized its chances of reclaiming the domain name.
Eyemagine is a California-based design and tech firm specializing in ecommerce, and it owns both design and character marks for the term EYEMAGINE. The Respondent, which makes custom home decks, is also a California company, and its current Eyemagine domain names redirect to its construction company homepage.
While the Complainant might own character and design marks for EYEMAGINE, they were not registered until 2012 and 2009, respectively, more than a decade after Clough Construction registered Eyemagine.com in 1996. Thus, its claim that the domain names were registered in bad faith seems dubious, given that the Complainant's company did not even exist then.
Additionally, the Respondent urges the Panelist to consider charging the Complainant with Reverse Domain Name Hijacking (RDNH), given the fact that after negotiations on the sale of the domain name between the parties broke down, the Complainant filed a UDRP complaint close to the year-end holidays and without telling the Respondent's attorneys. The Respondent believes that the Complainant was trying to cut response time short to have a better chance of winning the UDRP complaint.
In the end, the dual filings seem to reveal two approaches to the UDRP Complaint. The Complainant attempted to play dirty, being dishonest in its filing and attempting to limit the Respondent's ability to properly defend itself. The Respondent, on the other hand, clearly and concisely responded to each of the Complainant's allegations and made a strong case for RDNH. The WIPO Panelist sided with the Respondent and, in finding the Complainant guilty of RDNH, said “It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules."
This complaint should be a lesson to all brand owners to play by the rules and to hire legal counsel specifically experienced in UDRP complaints. Ultimately, the truth will emerge.
The term "fine tubes" generally refers to a variety of metal precision tubes used in construction and manufacturing. Fine Tubes Ltd. is a UK-based manufacturer of these tubes that ships its products around the world. Fine Tubes Ltd. is also the Complainant in a UDRP complaint with the World Intellectual Property Organization (WIPO) for the domain name fine-tubes.com against Ethen Rohre, a German company that makes the same type of tubes.
Follow all of that? The crux of the issue is Fine Tubes Ltd. claiming rights to a term that is both its company name and a generic term used to describe the type of tubes that both companies manufacture. Fine Tubes already owns FineTubes.com, which redirects to its homepage, FineTubes.co.uk, so this seems like a case of attempting to stop a competitor from using a domain name that could be potentially confusing.
The major issue in the complaint is that Fine Tubes Ltd.'s attempt to trademark the term FINE TUBES was rejected by the Office of Harmonization for the Internal Market (OHIM), which registers the Community Trade Mark in the European Union. The Complainant failed to disclose this rejection, which essentially consisted of OHIM saying that the term was too generic to claim rights to, and the Respondent made note of it in its submission.
WIPO explained that it could not refute OHIM and say that Fine Tubes Ltd. has rights to such a generic term, thus the domain name, so it rejected the complaint and ordered the domain name to remain with the Respondent. This case should be a lesson to all brand owners not to rely on UDRP arbitration to decide differently from previous trademark rulings, because the body will most likely agree with precedent.
RonPaul.com would be the intuitive destination for Internet users searching for the official website of former Texas Representative Ron Paul. Visitors to the site soon discover that it is not an official page but rather a fan page, a fact that is clearly displayed across the top of the site, which was first registered in 2000 and started as a fan site in 2008. Now, Ron Paul wants control of the site, as well as RonPaul.org, which the site's owners also hold.
Until now, Paul has used the site CampaignForLiberty.org as his official online home. The site, which primarily hosts content pertaining to the Campaign for Liberty, a political nonprofit that Paul created, features information about the politician himself as well, but is not as intuitive for individuals searching for Ron Paul's homepage.
Now that Paul wants control of RonPaul.com, he's seeking help from the World Intellectual Property Organization (WIPO), a U.N. agency, where he filed his UDRP complaint, according to Mashable. It is interesting that the former Texas Rep., who has been openly anti-U.N. in the past, calling it " rife with corruption and backroom deals" and anti-American in a 2003 letter, now is looking to the organization to help him reclaim a domain name. WIPO is the most widely known agency for resolving UDRP complaints, but Paul alternatively could have filed with the National Arbitration Forum, which has a higher proportion of American panelists. It is even more interesting, however is that he seems to be looking to reclaim a site that is supportive of his agenda, and doing so after his retirement from Congress, which occurred after his term ended in January.
Part of a sound domain name reclaim plan is prioritizing which domain names to pursue, and generally, pursuing fan pages can do more harm than good. It's also an unexpected move since Ron Paul and his campaign have been known for embracing the power that the Internet has to reach, cultivate, and activate a fan base, experimenting with platforms such as YouTube to do get his message out.
The sites' owners criticized Paul's filing in a post displayed on RonPaul.com. In it, they explain that the filing is "not cool," and that they tried to arrange a deal with Paul in which they would exchange RonPaul.com and its mailing list of 170,000 for $250,000, which they believe is a good deal for the politician. When he didn't accept and filed his UDRP complaint, the owners hired a lawyer to represent them in their attempt to maintain control of both domain names.
The domain name owners believe that they have a good case, but we will see what the panel decides.
Dutch company Merk-Echt describes itself as a "trademark agency" committed to protecting its clients' intellectual property and combating trademark infringement. You would think that a firm dedicated to trademark matters would have its own trademark and domain portfolio in order, but a recent UDRP filing reveals otherwise.
Merk-Echt filed a complaint with the World Intellectual Property Organization (WIPO) against Tilma Consultants over the domain name MerckEcht.com. In its complaint, the company claims that it holds registrations for both a stylized logo trademark and a word trademark in Benelux (the region comprised of Belgium, the Netherlands and Luxembourg), which were originally filed by the Respondent in 1999 and 2001, respectively but then handed over to Merk-Echt. Why would the Respondent simply hand over the marks? It turns out that Tilma Consultants was one of the founding shareholders of Merk-Echt, and Merk-Echt agreed to purchase Tilma's shares of the company in 2009.
As of now, the disputed domain name hosts the official page for Merk-Echt, but the company fears that the Respondent will soon take over site content. According to the Complainant, it talked with the Respondent in early summer 2009 about transferring the domain name to the Complainant, but discussions fell apart that July and the domain was never transferred. The Respondent claims that the payment for the shares and domain transfer was never received, so the transfer never occurred.
The Panelist sifted through the arguments and found that although the disputed domain is identical or confusingly similar to the Complainant's mark, there was no evidence that the Respondent initially registered the domain name in bad faith. Additionally, he suggested that the matter would better be settled in "ordinary court," before deciding that the domain should remain with the Respondent.
This case should be a lesson to any brand owners regarding trademarks and domain name protection, especially in cases of company division or changes in ownership. When a significant change like this happens, it's critical for domain names and trademarks to come as a package deal to avoid disputes like this one down the road.
There's no bigger stage to unveil a new offering than a Super Bowl commercial, and Apple took advantage of its prime inclusion during the telecast by unveiling a new vanity URL service, reports TechCrunch. If you blinked, you might have missed it, but during the final seconds of the Star Trek Into Darkness trailer, the URL AppStore.com/StarTrekApp flashed across the bottom of the screen.
This reveal signified the launch of a new service for all app developers in either the iTunes App Store or the Mac App Store. All developers will now receive personalized vanity URLs related to the app submitted as chosen by Apple. Apple updated its developer documentation on January 31 to reflect the change, which will allow brands to give consumers these new URLs to directly access apps.
With Apple nearing one million apps, the question of name overlap comes into play. In this case, users will be directed to a search page displaying all of the apps that match the generic term.
The domain name AppStore.com was a gift from Salesfoce CEO Marc Benioff to late Apple visionary Steve Jobs. It could prove increasingly valuable if brands decide to take advantage of these new URLs in upcoming marketing campaigns.