Domain Names and Trademarks - Legal Issues

Dec 5, 2007 • 4:29 pm | comments (1) by twitter Google+ | Filed Under WebmasterWorld PubCon 2007 Las Vegas
 

Clark Walton, Esq. - Domain Name Law

Diffe cant hide - Domain privacy services between UDRP and ACPA

Register your trademark - stay away from trademarks of others

You cant hide

UDRP - uniform dispute resolution policy - binding arbitration - less formal rules - no hearings

Benefits - fast process - works well against international registerants - fixed costs, can estimate what it will cost to get a domain - 2500-5000 for laywer

Downside - only thing you will recover is the domain - cant recover lawyer fees

ACPA - anti-cybersquatting consumer protect act (1999) - federal court - very formal rules about prodedure and evidence - live courtin hearings common

Benefits - Can get domain and damages up to 100k, laywer fees, restraining order, and some other fees paid back

Downside - harder to estimate costs - slower 3-6 months and sometimes longer (into the years)

ACPA: (3) Likely outcomes

- settlement 80-90% - Default judgement 10-20% - verdict at trial less than 1%

Case study: Default Judgement

Partner Weekly v. Tek System

Partner Weekly is client

- 2004 - Company starts and applies for trademark

- 2006 - Is granted trademark on company name - Feb 2007 - Client finds partnerSweekly.com

- Feb 2007 - started with a C&D letter

- March 2007 - Defendant makes whois data private using Domains by Proxy

Choose ACPA because:

- emergency relief - TRO - get domain locked - Preliminary injunction: get control of domain name - Possiblity of recovering damages

Wanted control of domain name during process and thus they choose the ACPA.

- March 2007 - TRO / Preliminary Injunction

- April 2007 - Had hearing and judge grants preliminary injunction - got control of domain

Service of Process - Have to serve defendant with complaint and motions - Can be difficult - email - regular certified mail - came back unreachable - in person service - old mailbox - search business records for defendant's address - no match

- July 2007 - Service by Publication - Use a newspaper ad for 5 weeks and this counts as the above types of ways of serving a person

- August 2007 - Motion for default - asked for attorney fees, 100k

Conclusion - Judge granted all requests - Won lawyer fees and 100k

Can they collect on judgement? - not without doing more work - does defendant own any other faluable domain names? - new service - search whois.sc

John Dozier - Techniques to monetize trademark domain names of other people

Uses the example of Caeser's Palace

- The hotel can protect its trademark in gaming, hotel, and entertainment. But if you open a laundry service in Idaho ... they cant stop you.

If you get a domain

- start a business with that name - once you are in business for awhile you can consider your brand protected - its faster to trademark the business name - there are ways to get a trademark in less then 30 days - once you get it you go to Google and Yahoo and tell them to not let anyone bid on it

- if you have records that show you are doing it legally - you will have a better chance against other companies that try to get the domain

- Sites like company-nameSucks.com and protect yourself that way - use it to voice your opinion (via a forum for example) and use free speach to protect yourself - you will win and lose some cases

- parody/critism - another way to create the site

- international domain law - if you are in the game, you take some risks - not everyone knows all the trademarks

Newest trend - International Disputes - has seen a rise the past 12 months

Sending a C&D gives the domainer time to react and a heads up that you are coming/aware.

Q: Dont hear question

A: Panel explains an example interesting case: Mergers. Two companies merge and the new name is unknown. Domainers go out and register different variations. The new merged company may or may not change the name to one of those domains.

The domains will get some traffic even if the new merged company doesnt change name to them. Merged company could come after the domainers - if they win or lose will depend on each case.

This has been happening more often as of late (this type of example)

Q: If you buy a domain and 5 months later someone creates a company and a trademark.

A: They cant get the domain from you, but depending on the trademark and what you are doing with it - they could come after you for trademark infringement

Q: Federal vs State trademarks?

A: Clark explains that even though he has a state trademark 4 years earlier, the federal could beat him. He considers the state trademark useless.

Q: Another question about state trademarks.

A: Google pays attention to state trademarks and you could take out your comp with them.Google does this on a global scale and is hard for them to second guessing/digging too deep into the trademarks and how trustworthy they are.

Q: What is the law about companyname-sucks.com

A: Right now it is legal in the US. The company can come after you and get it - but not always. If you are trying to make money on the page, the company has a better chance to get it from you as it just isnt a freedom of speech arguement.

Q: John Doe.com - asks if anyone has had this type of case.

A: Personal names can become trademarks. They can be a brand and can be more difficult. Last names for example. When operated as a business it can/will be treated as if it was any other business name.

Contributed by DaveR.

Previous story: Calling All Clicks: PayPerCall and You
 

Comments:

Lance

12/06/2007 07:45 pm

What is the law on authorized reseller companies that have a domain with a trademarked brand? An example might be hpsystems.com where my company is an authorized reseller of Hewlett Packard. Any advice?

blog comments powered by Disqus