Article published by ABA could lead trademark holders astray.
I was doing some research this weekend when I came across an article published by American Bar Association in June. The article by Tamara Kurtzman, a California attorney, rails against the practice of buying domain names for future sale to companies that may want to use them. Kurtzman calls this “anticipatory cybersquatting.”
Kurtzman blames people registering domains that might someday be similar to trademarks for causing a “frustration of corporate opportunity.”
She notes that not all of this activity is bad, though.
It is important to note, however, that not all instances of anticipatory cybersquatting quash legitimate business opportunity. Specifically, as the harms associated with this practice derive primarily from an interference with a trademark holder’s trademark rights, the registration of domain names that cannot be trademarks in the first place (such as generic terms) do not compromise corporate opportunity.
Aren’t most trademarks made up of “generic” terms?
Kurtzman explains that the Anticybersquatting Consumer Protection Act (ACPA) doesn’t effectively counter “ancticipatory cybersquatting” because the trademark has to be distinctive or famous at the time the domain is registered.
She contrasts this with UDRP, in which she makes a startling statement:
Although the UDRP does not directly prohibit anticipatory cybersquatting, it is currently the preferable means of extricating a domain name from anticipatory cybersquatters in many circumstances. Unlike the ACPA, the UDRP does not require that the domain name at issue be distinctive or famous at the time of registration. As such, even holders of after-acquired trademark rights may seek relief under the UDRP.
The UDRP specifically states that the domain must have been “registered and used in bad faith”. So if it was registered before the Complainant had a trademark, then it’s not a case subject to transfer under UDRP because it couldn’t have been registered in bad faith to target the new trademark holder.
Kurtzman clarifies:
In light of these largely ineffective efforts, UDRP panels have been increasingly broadening their interpretations of the bad-faith UDRP element in order to find against anticipatory cybersquatters. Specifically, administrative panels increasingly are willing to rule that, even though a trademark holder may have acquired trademark rights after the registration of a domain name, action by the domain registrant that seeks to take advantage of a complainant’s goodwill in its mark is sufficient to constitute bad faith under the UDRP. Similarly, UDRP panels increasingly have been willing to find that website inactivity (a respondent’s passive holding of the domain) is evidence of bad-faith use and registration in that it suggests registration for the purpose of selling the domain for profit.
I’m not sure what timeframe Kurtzman is considering, but I don’t find panels to be “increasingly broadening their interpretations.” It is true that some rogue panelists have tried to bend the plain language of UDRP to find in favor of Complainants, but this practice seems to have significantly diminished, especially since the release of the WIPO 3.0 update in 2017.
Also, filing a UDRP when trademark rights postdate the registration is grounds for being found guilty of reverse domain name hijacking. As stated in WIPO’s overview:
Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights,…
I could not find any UDRP cases in which the author has been listed as representative by searching UDRPSearch and UDRP.tools.
Didn’t figure we’d have the Minority Report of domain names so soon.
If there’s no TM at registration, then the domain is generic.
I love her argument there. It works fine.
A trademark does not unilaterally give the mark holder rights to a domain name. Pure and simple.
This is the danger of only having one side represented in developing UDRP jurisprudence. Registrant attorneys are shut out from serving as panelists and from developing the WIPO “Consensus Views”. Instead only the voice of trademark interests are heard. As Tamara Kurtzman attempts to do, there is constant pressure from TM interests to weaken and distort the criteria in the UDRP to turn the UDRP into a tool for late arriving trademark holders to steal domain names from long standing registrants.
Let me tell you one place that they cannot succeed. The Court in Germany. Even if they win at UDRP the Court will hand it back.
Mike, can you reference any recent favorable decision of a German court? A lot of really bad decisions come to my mind…
You say, quote “…Aren’t most trademarks made up of “generic” terms? ” End Quote
Indeed, look at it like this, all letters are generic. What amazes me is the utter hypocrisy where a domain owner cannot own “a” domain just because their client wants it for their trademark. I have just spent 4 years in Court because of such A holes. Success in end but why the F did I have to go through it.
“It is true that liberty is precious; so precious that it must be carefully rationed.”
– Vladimir Lenin
I didn’t see her mention the anticipatory reverse domain name hijacking tort that could end up costing her clients hundreds of thousands in fees.
So I see the potential for the reverse happening here. A company created for the sole purpose to register trademarks then file UDRP to acquire (steal) valuable domain names. Just like there are companies that do nothing but buy patents and then sue other companies.
Much has already been written about Michael Gleissner’s trademark activities, if you care to dive down that rabbit hole. Many suspect he’s doing exactly that. Always amazing what people with more money than morals are capable of.
Oh, that’s been done.
The Trademark Clearinghouse is full of that sort of nonsense.
“anticipatory cybersquatting”… ain’t that like buying a vacant lot with the expectation of developing it at some to be determined future date?
Exactly Ron,
When will our legal minds grow up to understand that we now living in a digital or digitized world, and digital property is just as real as hard “real” estate.
If I buy some property in a rapidly expanding town, and hold it for resale at a later date, would I not be “frustrating the corporate opportunity” of builders who want to establish a sub-division there? Should they have the right to take that property away from me?
Another point is that the digital world is rapidly expanding. Twenty years ago we had dot.com, dot.net, dot.org and a few other dot.stragglers, and it would have been fair to say that at that time, owning a a domain name that was the same as trademarked name might have risen to the level of infringement .
Today we have over a thousand new TLD’s, and this can grow into many thousands.
With the exception of cases where marks are inherently distinctive or have acquired secondary meaning, is it fair or reasonable that mark holders of fairly generic words or phrases should deprive all of industry of the right to use every one of those extensions in pursuit of their legitimate business goals?
The folks at ICANN need to address this, and trademark bullies need to know that their gig is up.
That could certainly lead to “frustration of building opportunity”
It’s good when a lawyer has a little vision and can think outside the box.
Therefore, how about one of our industry attorney’s hit her with a class action defamation claim? 😉
(Even if they wanted to and that was even possible they almost certainly never would, however, because it is the ABA and there is also this “attorney-to-attorney-respect” code.)
Comment just went into moderation again, Andrew. Been a long time, lol…
What would be nice (and save a lot of time) would be if WIPO 4.0 put a time limit on UDRP claims. Once a domain has been registered for 10 years, the UDRP no longer applies.
In internet years 10 is more like 100. I’d put it at 1 year.
So how about people that file for trademarkes of taken domain names be liable for infringement? I mean it really should be the other way around. Shouldn’t it? Thought of the name combination first and or purchased it for future use prior to the mark. It’s just like common right law.
Indeed, could not one consider registering a new domain then parking it for monetization as ‘first use in commerce’ ?
I have two domains where that has happened, both very generic, the first I was amazed as I cannot find anywhere they’ve done actual business,they do not use the trademark symbol on any advertising/promotional materials or their website and the broad coverage/use of the mark goes far and beyond the stated business, the second one they trademarked after giving me a ridiculously low offer,they came back a day before they had to publish the disclaimer on the term with the usual ,small company, no funds etc.
These are blockchain companies both domains were registered years before they even formed or filed for TM.
Patrik, thanks for this comment but I had like to know where it eventually ended. Did you just handed over the domains to them like that for free even though they seems to attempt to use trademark law as cover to take offer your domains?
This is a crazy-act
No I still own both domains, and would seek a RDNH if either tried to take them through UDRP.
Tamara Kurtzman is another example of a know-it-all who is incabable of rational/logical thought process despite an apparent ‘intelligence’ indicated by an attorney status. Of course I’m making the assumption Kurtzman doesn’t feel the same way about vacant land owners, landlords and renovators who have inflated the costs of homes enslaving millions of ordinary private individuals for decades with hundreds of thousands of dollars of extra debt.
And shareholders/stock-investors or any other speculative investment? Heck, also retailers (middlemen) or anyone that bundles or value adds to any product, and gemstone minors, patent inventors, etc. Oh I didn’t value-add so I don’t deserve to sell at profit? If I hadn’t rejected a dozen pathetic offers before you, the opportunity for you to own the name would be gone.
My domains are not required to meet basic human living needs like housing, therefore they are more of a luxury item. I want to sell my domains eventually, so give me a price that fairly compensates me for my investment so I can make an exit. Yes, every domain I sell I treat as an exit from a start-up. If you make a profit, I want a cut. Don’t like it, get a .net or a .horse, and leave me alone.
I don’t know the motivation behind the article, besides regular stupidity, other than Kurtzman may be compelled/sponsored to push an agenda. Otherwise an article which attacks and defames me and other legitimate and lawful domain owners may signal underlying malformed personality traits.
Great comments !
This article reeks of. Monkey read monkey write in pursuit of gaining clientele.
Maybe it’s time to counter publish with abandon the facts and use these people as examples (including mr. Fomo.com,)
Mr G and others.)
The funny thing: FOMO is an acronym for
“Fear of missing out” in VC.
One question I have for the crowd,
In the case of Fashion.com,
The current owner is pretty well insulated.
What about the new owner in relation to timing and TM’s ?
There is an undercurrent pushing for
Sales to be considered as “new reg”
To bolster “bad faith” consideration and rights.
Reading thru the content of current lawsuits this would be a bad precedent.
At some point TM defenses should have to show actual damage and the right to own domains is simply possession just like all of the examples shown above.
There isn’t a person or company on this planet that didn’t have the same opportunity to acquire as the person who acquired it!
Cheers
The praise she heaps on herself at her website is impressive.
WIPO 4.0 should state that any NEW trademarks will have no rights to the .com version of their trademark and all current trademark holders must file a UDRP within 6 months or forfeit any claim to the .com of their trademark. If a business is stupid enough to register a trademark without owning the .com, too bad.
Looks like this articles lawyer “Tamara Kurtzman” might be preparing to snag the domain TKM.COM because she uses that 3 letter abbreviation to refer to herself and her law office currently parked at tkmattourneys.com
“anticipatory cybersquatting”… isn’t that like someone investing in acquiring a law degree and passing the bar exam with the expectation of being able to fleece, oops, I mean bill their future clients a thousand dollars an hour or more to drip feed them with snippets of the law knowledge that they invested in and to string out its dissemination for as long as they can get away with. Some people feel entitled to earn as much as they possibly can in their own field but resent anybody else in any other field from earning more than peanuts.
The author is totally ignorant of UDRP jurisprudence. A post-acquired trademark owner does have standing to maintain a UDRP but it has no actionable claim.
It’s still billable.
Once.
With attorneys, as with so many other things, quality is usually inversely proportional to the effort put into advertising and promotion.
An attorney who cannot retain clients or obtain favorable referrals must engage in self-promotion in order to attract new victims.
You are spot on Andrew with this I’m not sure what timeframe Kurtzman is considering, but I don’t find panels to be “increasingly broadening their interpretations.” It is true that some rogue panelists have tried to bend the plain language of UDRP to find in favor of Complainants, but this practice seems to have significantly diminished, especially since the release of the WIPO 3.0 update in 2017.
The reason for the confusion is this article was originally published in June of 2016 why they made no note of that in the June 2019 publishing makes no sense.
As soon as I read this article awhile ago, I purchased tamarakurtzman.com
Maybe Ill make a site about promoting domain squatting and digital real estate