Today, FairWinds released an update to its 2008 Verizon Case Study. Back in 2008, we projected that our work to improve Verizon’s domain name portfolio would drive over 3 million visitors to the company’s websites and save Verizon over $1 million.
After revisiting the data this year, it turns out that those original projections were a bit low. In reality, we helped Verizon attract over 93 million visitors to its sites over the first three years (that’s an average of 31 million visitors per year), and drive an additional 321,000 online sales annually, which translate into millions of dollars in revenue for Verizon.
How did we do it? We took a three-pronged approach to make Verizon’s domain name portfolio as lean and efficient as possible. First, we cut out all the low-quality domains that were costing Verizon money but not driving visitors or otherwise contributing to its business. Then, we identified and recovered key domain names that the company did not already own. Finally, we helped the company redirect its domain names to the relevant content that users expect to find when they type those domains into their browsers.
But the best part of the work we did with Verizon was helping to change the company’s approach toward its domain name portfolio. Verizon regularly evaluates its portfolio to make sure that it is not carrying dead weight, and approaches the registration of new domains with a critical eye, always asking whether the domain will improve its online business. Ultimately, Verizon is able to provide its audience with safer online experiences that deliver relevant content, and increased its revenue in the process.
The real story in HTL Automotive, Inc. v. Techshire, NAF Claim Number: FA1203001435046 (2012) may be the one about a law firm that doesn't know when to say "no" to its clients. The spectacular failure of the complaint here provides yet another lesson to brand owners on why it's so important to hire experienced and competent UDRP counsel. The NAF Panelist in this case held the Complainant guilty of reverse domain name hijacking (RDNH) and stated that the case should never have been filed because the domain name in question, hooman.com, was registered before the Complainant's trademark rights existed, and an individual at the Respondent's business actually has the surname Hooman, which is identical to the disputed domain. To add insult to injury, the Panelist found that the Complainant had fabricated evidence when it claimed that the Respondent, in a phone call, offered to sell the domain for $25,000.00.
While the Complainant itself may be responsible for some of these shortcomings, it seems that its counsel is no stranger to such controversy. The Counsel in this case had also previously gotten not one but two other clients tagged with the reverse domain name hijacking mark of shame in earlier cases. See, Mirabella Beauty Products, LLC v. Mrs Jello, LLC, WIPO Case No. D2009-0673 and Von Eric Lerner Kalaydjian v. Simon Steinle, NAF Claim Number: FA0205000114371 (2002).
One of the most important cases a reputable lawyer will ever handle is the one he/she never files. In addition to the role of zealous advocate, an important role for any lawyer is that of the careful Counsel when a given set of facts do not make out a good case. Even the most emotional and aggressive client can eventually be helped to understand that it needs to avoid filing a case that is either groundless or possibly unethical, but it takes a firm and confident lawyer to do so. Sadly, the law firm in this case now has three clients who have learned that lesson the hard way.
It is a common practice for brand owners to send a demand letter to a domain owner suspected of infringement. This can sometimes result in the parties negotiating a sale of the domain. However, if negotiations break down, the brand owner may decide to proceed with a Complaint against the domain owner. It is important to understand how these negotiations can and can't be used in an effort to show the domain owner's bad faith. For example, if the reply to the brand owner's demand letter is, "Pay me $10,000 for this domain," this could very well end up as Exhibit A in a UDRP Complaint to show the domain owner's intent to sell the domain for a huge profit. However, if the domain owner requests that the brand owner make an offer, the brand owner may not be able to use any subsequent correspondence as evidence, especially if it only shows that the domain owner is negotiating within a reasonable range of the brand owner's offer. The bottom line is that UDRP Panelists may not view as bad faith a situation where a brand owner actively participates in a negotiation, or intentionally encourages a domain owner to request a very high sale price. Murad, Inc., the Complainant in a UDRP Complaint with the National Arbitration Forum (NAF), recently discovered this first hand.
Murad, Inc., the maker of well-known skincare products and nutritional supplements, filed its Complaint against Stacy Brock over the domain name InclusiveHealth.com. Murad, Inc. began using the INCLUSIVE HEALTH trademark in 2003 and filed a trademark application for the mark in 2006, shortly after the Respondent registered the disputed domain. Since the registration, the domain has remained unused; however, the Respondent presented evidence to support future plans for using the domain as a site on which to aggregate her research, teaching, and presentations in public health and health policy.
The Complainant alleged that the Respondent had offered to sell the disputed domain to the Complainant on two prior occasions, first for $9,000 and again, more than a year later, for $50,000. In both instances, however, it was the Complainant that had initiated the negotiations for the sale of the domain. The Respondent argued that because the Complainant had in fact initiated the offers, there was no evidence of bad faith. Drawing on previous decisions, the Panel agreed with the Respondent, noting, "…when a Complainant initiates an offer for the sale of a disputed domain name, a Respondent’s willingness to engage in negotiations for the sale of the domain name does not equate to bad faith."
Murad, Inc.'s second line of argument, that the Respondent's passive holding of the InclusiveHealth.com domain for more than five years showed lack of rights and legitimate interests, also fell flat. Although passive holding of a domain name is sometimes evidence of lack of rights or legitimate interests or registration in bad faith, this evidence hinges on other circumstances also being in place, such as knowledge of a Complainant's well-known mark and lack of demonstrable plans to use a domain name. As the Respondent argued, "simple passive holding of the domain name by the Respondent should not, in absence of any particular circumstances of the case such as those listed under 4b of the Policy, amount to a finding of use in bad faith."
The NAF Panel, taking into account that the Complainant did not meet the burden of proof for bad faith registration and use, denied Murad, Inc.'s Complaint.
The U.S.-based sports entertainment network ESPN, Inc. recently filed a UDRP Complaint against DisplayPop / Bill Tucker over the domain names ESPNShowcaseFlorida.com, ESPNSportsNetwork.com, and ESPNNetworkSports.com. A Panelist with the National Arbitration Forum (NAF) denied the Complaint. Although ESPN holds trademark rights to the ESPN mark, the Respondent argued that the letters ESPN in the disputed domains stood for "Extreme Sports Professional Network."
The decision illustrates how, in cases involving multiple domain names, UDRP Panels examine the evidence for each domain individually and may arrive at different conclusions for each domain based on the facts presented. In the case of the ESPNSportsNetwork.com domain, for example, the Panelist found the Complainant did not provide any evidence at all to show that the Respondent lacked rights or legitimate interests in the domain. Therefore, the Panelist's examination of that domain did not extend to include analysis of registration or use in bad faith.
To satisfy the "registered or used in bad faith" component of the policy for the remaining two domain names, ESPNShowcaseFlorida.com and ESPNNetworkSports.com, ESPN argued only that the Respondent must have had "constructive knowledge" of the ESPN trademark prior to registering the domains. However, no evidence regarding whether the Respondent had used the names in bad faith or for the purpose of reselling the domains to the Complainant was proffered.
This case points out that, under the UDRP, the mere use of a trademark in a domain name is not, in and of itself, sufficient to prove bad faith and lack of legitimate rights and interests. Complainants must thoroughly present their case using the components of the disputed domain, the content of any resulting website, and/or the actions of the Respondent as additional evidence.
The practice of registering domain names that correspond to current events has a long and storied tradition (just ask Tiger Woods). It is such a popular practice among certain groups that some people have even taken to monitoring domain name registrations for clues about major new business developments. Most recently, speculation about an impending merger between US Airways and American Airlines erupted last week when reports revealed that US Airways had registered domains such as American-USAirways.com, AmericanAirlinesUSAirways.com, and USAirways-American.com.
In general, I’m apathetic when it comes to airline mergers.
Not so when it comes to the New England Patriots.
Yesterday, the digital pages of the Boston Globe were buzzing with speculation about whether or not Tim Tebow, in the wake of the Denver Bronco's reaching a deal with Peyton Manning, will become the newest Pat. Incredulous, and conflicted in my feelings about Tebow, I did a couple of domain name look-ups to try and gauge how much traction the rumors had gained. The results? Like a Boston Globe reader poll that found an almost even split between those who wouldn't want Tebow to join the Pats in any capacity, those would maybe want him, and those who would welcome him, my domain look-up didn't tell me much, except perhaps that New England fans aren't quite ready to embrace Tebow.
I looked up various combinations of Tim Tebow/New England Patriots-related domains including PatriotsTimTebow.com, TebowPats.com, PatsTimTebow.com, TebowBrady.com, and TebowBelichick.com. Of the fifteen domains I checked, only TimTebowPatriots.com had been registered as of yesterday. Of course, the Tebow trade is still all speculation. I for one won't be rushing to register my preferred Tebow New England domain (MrTebowGoesToNewEngland.com) until I know more.
Since the news broke over the weekend that the National Telecommunications and Information Administration (NTIA) had cancelled the request for proposals (RFP) for the Internet Assigned Numbers Authority (IANA) contract, FairWinds has received many inquiries from brand owners wanting to know how the cancellation of the RFP—and the NTIA's implied rebuff of ICANN—will impact the Internet and brands' digital strategies.
In the short term, the NTIA's decision will have no impact on the Internet whatsoever because, along with its cancellation of the RFP, the NTIA has extended ICANN's current contract through September 2012. If the IANA contract ends up being awarded to an organization other than ICANN at some point in the future, an unlikely, but not impossible scenario, that entity will likely serve as a check on the technical feasibility of ICANN's policy-making powers. While this scenario could potentially shape Internet policy creation in the future, brands and Internet users are not likely to feel the effects any time soon.
In a column published in the Sunday Review section of the New York Times last Sunday, I was surprised and pleased to see an opinion piece by writer Delia Ephron about her struggles to reclaim her domain name, DeliaEphron.com after a family member had let the registration lapse. Ms. Ephron describes what so many FairWinds clients feel when they discover that someone else, usually a bad actor, has scooped up their domain name. "I was angry, and I wanted my name back," Ms. Ephron wrote. "It represented my life — my hard work, my accomplishments, my point of view, my mother’s originality. I guess I was proud of it. I certainly didn’t want anyone exploiting it." For Ms. Ephron, who relied on her domain name to market and promote her books, the stakes around recovering it were high. While she eventually got her name back after filing a UDRP Complaint, the entire experience left Ms. Ephron feeling angry, violated, and somewhat helpless.
Ms. Ephron is one individual with one domain name. Multiply her frustration by hundreds, often thousands, of domains and you begin to approach the experience of major companies and organizations in the domain name space today. While Ms. Ephron was able to recover her domain somewhat painlessly (the UDRP is usually much less of a hassle than arguing with cybersquatters), losing control of a domain name has the potential to result in a chain of negative events: reputation-damaging content that appears on the sites hosted by the domains can become associated with your brand; consumers may be exposed to negative experiences; and ultimately, you may have to engage in a drawn-out and expensive recovery process. The experience of liberal political pundit Keith Olbermann after the sale of KeithOlbermann.com to the right-leaning website, The Daily Caller, is one well-known example of how this can play out. However, like Ms. Ephron, Mr. Olbermann is one person, but these concerns are magnified when there are hundreds or thousands of domain names and brands to keep track of, as many companies must.
For companies, the experience can be mitigated, however, by the fact that they usually hold the trademark for their brands. So when a domain does end up in the wrong hands, proving their rights to it under the rules of the UDRP can be relatively simple. Individuals that don't have trademark rights to their name, however, can face much greater difficulty. Many actors, singers, and other entertainers trademark their names early on in their careers. But often business executives and politicians fail to take similar steps (and Mr. Olbermann is currently in this camp).
In cases where both a Complainant and a Respondent of the same name are vying for a corresponding domain, the UDRP Panel's decision will come down to other factors, such as the content maintained on the associated website. Content that is directly competitive with, or profits from, the fame of the Complainant’s trademark may be ruled an illegitimate use of the domain. But a personal website with no reference to the other party typically will often be counted as a legitimate use.
As always, the best protection against ending up in a situation like Ms. Ephron or Mr. Olbermann is a proactive approach: register the most prized variations of your name under your ownership, maintain relevant content on them, don't forget to renew them when the time comes, and police the wider space for any names that potentially take advantage of your work or reputation.
Quick – what is the means through which ICANN derives its authority to oversee the management of the Domain Name System (DNS), the allocation of IP addresses, and other technical functions of the Internet?
If you said, “the IANA contract,” then congratulations, you guessed correctly.
IANA, or the Internet Assigned Numbers Authority, is an entity that oversees the functions mentioned above. Shortly after ICANN, the Internet Corporation for Assigned Names and Numbers, was created, the U.S. Department of Commerce (DoC) signed a contract with the new organization to administer IANA and its functions. They called it – you guessed it – the IANA contract. Currently, IANA is operated by ICANN.
This contract between ICANN and the DoC has expired and been renewed before. Most recently, it was set to expire on March 31, 2012, but was extended six months to September 30, 2012. In anticipation of the impending expiration, the National Telecommunications and Information Administration (NTIA), a department within the DoC, issued two public notices last year, in February and again in June, requesting input on what changes should be made to the IANA contract to improve the performance of the IANA functions.
Many organizations, including the Coalition Against Domain Name Abuse (CADNA) the non-profit organization that FairWinds helped to found, submitted their input. This response ultimately led the NTIA to add additional requirements to the statement of work for the IANA functions. One of the biggest new requirements was the need for structural separation of policymaking from implementation – something that ICANN, as the organization that develops policy around the DNS and other Internet identifiers, inherently lacks.
In November, the NTIA issued a request for proposal (RFP) for a new IANA functions contract. By the December 19 deadline, four organizations had responded to the request, including ICANN. In a notice released over the weekend, the NTIA pointed out that “The government may cancel any solicitation that does not meet the requirements.” It followed that statement with this one:
“Accordingly, we are cancelling this RFP because we received no proposals that met the requirements requested by the global community. The Department intends to reissue the RFP at a future date to be determined (TBD) so that the requirements of the global Internet community can be served.”
This means that ICANN, the organization that has administered the IANA functions contract since 1998, no longer meets the NTIA’s new requirements.
The NTIA, according to its statement, will reissue the RFP. It remains to be seen whether ICANN will take steps to adjust its organizational structure to better meet the new requirements, or if we will see a brand new entity taking the IANA responsibilities away from the organization.
In the latest on the march to rebrand Overstock.com as O.co, the company this week launched O.info, which it is billing as a portal for customer reviews of Overstock.com's—excuse me—O.co's products and services, as well as information about company policies.
As I wrote last November, following consumer confusion over whether to use the domain name Overstock.com or O.co to access the company's website, Overstock announced that it was "stepping back" from its O.co domain. With this latest development, the company appears to be forwarding its rebranding efforts once again. It probably doesn't help with the consumer confusion issue that Overstock.info has been registered to various third parties since 2004.
Despite the inconsistencies and confusion surrounding the O.co rebranding, Overstock's use of the .INFO gTLD as a platform to deliver information and reviews to consumers is an intuitive and memorable use of the gTLD and, with the right marketing, just might be successful—not to mention help its languishing cousin, O.co.
Just as I was getting over the New England Patriots’ losing the Super Bowl. To the New York Giants. Again.
Jet Blue Park, the brand spanking new spring training home of my favorite baseball team, the Boston Red Sox (like my colleague Posie Wilkinson, I too am a Boston girl) opened to visits from the public on Saturday. It will officially open for the BoSox’s first exhibition game of the 2012 season at the end of this week. While on the outside, the stadium looks modern and artsy, the ballpark inside is as authentic a recreation of Fenway Park as one could possibly imagine. It has all the same field dimensions, it has the same scoreboard, it even has its very own – you guessed it – Green Monstah.
What it doesn’t have, however, is the JetBluePark.com domain name.
According to NESN, some Cubs fan named Eric Engelman went out and registered the domain and redirected it to the official site of…the New York Yankees. Of all the teams in the whole league, it had to be the Yankees.
No word yet on what this joker Engelman plans to do with the domain name. But I’m willing to bet he won’t be redirecting it to a Cubs World Series Championship site anytime soon.
Domain name or no, at least we broke our curse.