Displaying posts under "Policy & Law"
Trademark counsel should pay attention to the latest TLD to enter sunrise.
A lot of people have focused on .sucks as an example of a top level domain “shakedown” in which companies will feel compelled to register domains for protective purposes.
There’s a similar domain name entering sunrise today that hasn’t received much attention: .exposed.
It can be used in much the same way that .sucks and .gripe can be used, so it’s worth paying attention to if you’re trying to protect your company’s brand.
Trademark counsel might be comforted that the domain name is controlled by Donuts. They aren’t charging $25,000 for sunrise registrations, and the domain is part of Donuts’ Domain Protected Marks List program. Companies that have paid for the service will have their brands blocked in .exposed, just like all of the other Donuts domain names.
Company loses dispute for Unstoppable.com domain name.
Fiskars, a company you most likely know for its scissors, has a trademark on “Unstoppable”. But a Uniform Domain Name Dispute Resolution Policy (UDRP) panel has ruled that its rights to the term are stoppable.
The company filed a cybersquatting complaint under UDRP against the owner of Unstoppable.com. Fiskars lost its case (pdf) despite the domain name owner not responding.
The panel ruled that Fiskars did not prove that the registrant of the domain name had registered and used it in bad faith. The company provided documentation of two trademarks, but those weren’t registered until 2012 and 2013. The panel pointed out that the domain was registered in 1999. It appears the current owner acquired it in 2010. Regardless, the company didn’t show use before the domain was registered.
Even if Fiskars did show rights predating the registration, the panel determined that the term “unstoppable” is generic. Therefore, just using the term “unstoppable” in the domain would not prove that the respondent was aware of the complainant’s rights.
The panel also pointed out that the respondent is in Malaysia and Fiskars did not provide any evidence of the mark’s fame in that country.
The Trademark Clearinghouse has sent over 20,000 notices to trademark holders based on domain registrations matching trademarks.
The Trademark Clearinghouse has now issued 20,076 trademark notifications based on second level registrations in new TLDs.
The notifications are sent to entities that have registered their marks with the Trademark Clearinghouse whenever someone registers an SLD that matches that mark.
There are only 27,252 marks submitted to the Clearinghouse, not including so-called “TM+50″ submissions that are variants on submitted marks.
While that number may seem high, it does not necessarily correlate to attempts to cybersquat. There are many common terms in the Trademark Clearinghouse such as pizza, money and bank. These generic terms are quite popular and certainly make up a good number of these notifications. I also assume the number includes notices triggered by the brandholders themselves registering domains matching their marks.
17,570 notifications had been sent as of February 28, so it seems that notifications are currently being sent at a clip of over 200 a day. I suspect the reality is that the number spikes on days when a new TLD enters general availability.
Entertainment company now controls Gauntlet.com domain name.
Warner Bros. has filed a UDRP against the domain name Gauntlet.com, and it appears the domain name registrant handed the domain name over as a result. It’s not clear yet if a payment was involved, but I’ve reached out to the previous domain owner.
Warner Bros. distributed the 1977 film The Gauntlet directed by Clint Eastwood and starring Eastwood and Sondra Locke.
But its interest in the domain name might not have to do with a movie remake.
Warner Bros. Interactive Entertainment purchased some of video game publisher Midway’s assets for $49 million in 2009 after Midway filed for bankruptcy. Midway had developed a Gauntlet video game. It registered Gauntlet related domain names after the acquisition.
Only time will tell if the domain name will be used for a movie or video game.
The UDRP was withdrawn and the latest UDRP record shows that the domain name is now controlled by an intellectual property law firm.
Company filed and dismissed two lawsuits against domain name before filing UDRP.
Life is Now, Inc. has filed a UDRP against the domain name JustBelieve.com.
The company promotes coaching by David Neagle, whose website describes him as “Master Income Acceleration Mentor for Entrepreneurs & Corporate Professionals”. It has a registered trademark for “Just Believe” and claims first use in commerce of 2003.
The domain name is owned by Greg Ricks, who has owned the domain name since 2000. This is the second case Ricks has faced in the past week on a domain name he’s owned for over a decade. His Qualify.com domain name is also under attack.
Life is Now has already sued twice to try to get the JustBelieve.com domain name. It sued two privacy services that have been listed for the domain name during 2012-2013, but later voluntarily dismissed the cases both times.
When the initial lawsuit was filed JustBelieve.com went to a parked page that predominately showed ads for basketball.
After the lawsuits were filed Ricks began forwarding the domain name to sites that had “JustBelieve” in them, either in the domain name or the subject matter of the pages. For example, it forwards to JustBelieveOnline.com and a page on Theme Forest that offers a “Just Believe” theme for churches.
The very short UDRP complaint (see PDF here) claims that forwarding JustBelieve.com to these others sites proves that the owner has no rights or legitimate interests in the the domain name and that it was registered in bad faith.
On the contrary, it basically shows that “Just Believe” has many uses.
It seems that the complainant is a bit confused. Referring to the four sites JustBelieve.com forwards to, the complaint reads:
Each offending website has “justbelieve” as part of the domain name, and identifies themselves by using “just believe” as part of their webpage name. The “justbelieve.com” domain name and the “Just Believe” tags at the top of each of the websites demonstrate that Respondent has intentionally attempted to attract, possibly for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponorship, affiliate, or endorsement of Respondent’s websites or comments.
Is the complainant confused as to who owns the four sites that are forwarded to? Does it think they are in cahoots with the domain owner? It’s not clear to me, but the law firm for the UDRP case (which is different from the previous lawsuits) also cc’d all four websites with the UDRP.