Domainnamesandtrademarkslegalissuesclarkewaltonppt2588

Domain Name Law Essentials

Clarke Douglas WaltonWalton Internet Law

Our Roadmap• Popular Legal Remedies (UDRP &

ACPA)• Case Study• 5 Minute Trademark Law• Essential Tips

Resolving Domain Disputes

UDRP– Uniform Domain Name

Dispute Resolution Policy (1999)

• Binding arbitration

• Less formal rules

• No hearing

ACPA- Anti-cybersquatting Consumer

Protect Act (1999)

• Federal court• Very formal rules

about procedure and evidence

• Live court hearings required

Two Ways to Resolve Domain Name Disputes

Resolving Domain DisputesBenefits and Costs

UDRP• Benefits:

– Fast (decision in 60 days)

– Works against international registrants

– Fixed Costs• Filing fee: less than

$1,500• Attorney fees: $3,000 to

$5,000• Downside:

– Only remedy is transfer of domain name

– Can’t recover damages– Can’t recover costs or

attorney’s fees

ACPA• Benefits:

– Get domain name transferred

– Recover damages (up to $100,000 per domain name)

– Recover court costs and attorney fees

– Get emergency relief (restraining order, injunction)

• Downside:– Difficult to estimate costs– Slow process (3-6 months is

minimum, can take years)

Case Study• Brett’s instructions:

– “Clarke - you have unique first hand experiences with this topic as a domainer. I would like to see you use a case study to prop up your central theme.”

Pubcon.com• Pubcon.com domain name

registered September 22, 2003

Trademark Strength• Trademark = Source identifier• Not All Trademarks Are Created Equally• 5 Levels of Trademark Strength

– Fanciful (very strong)– Arbitrary (very strong)– Suggestive (strong)– Descriptive (weak)– Generic (no strength at all)

Internet Examples• Fanciful (very strong)

– Zillow, Expedia• Arbitrary (very strong)

– Kayak, Amazon• Suggestive (strong)

– Youtube, Moviebuff, Gamespot, SeatGuru• Descriptive (weak)

– The Internet Movie Database, HomeLoanCenter

• Generic (no strength at all)– Hotels.com, Lawyers.com

Who Has Priority?• Date of first TM use in commerce

determines priority (in U.S.)• Not date of TM filing • Not date of TM registration

Pubcon.com Trademark

• Filed March 16, 2004• Registered September 27, 2005• First Use: June 30, 2001

– Common law rights began

Pubcon.com: Brett vs ClarkeWho wins?

• Pubcon.com strength?– Probably suggestive

• Priority?– Domain name registered by Clarke

September 23, 2003– Brett’s First Use: June 30, 2001

• Bad Faith?– Depends

Content on Domain Matters• Suppose you register Venetian.com

– “Venetian” for casino services is arbitrary, so it’s strong.

– “Venetian” for Venice, Italy is generic (geographically descriptive)

– Publish content about Vegas casinos? • You’re in trouble.

– Publish content about Venice, Italy?• You’re probably fine.

Domain Name Law Essentials

– UDRP vs ACPA– Not all TMs created equally– Priority is key (date of first use in

USA)– Content affects rights

• Be careful about content on your parked pages

THANKS! QUESTIONS?Clarke Douglas Walton

Clarke.Walton@WaltonWebLaw.com

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