The December 2009 issue of les Nouvelles, a publication of Licensing Executives Society International, has an interesting article about the interplay between domain name disputes and trademark licensing.
“WIPO Domain Name Cases Offer Trademark Licensing Lessons,” by Hee-Eun Kim, an LLM student in Munich, Germany, starts by describing the Uniform Domain Name Dispute Resolution Policy (UDRP) and the role of the World Intellectual Property Organization (WIPO) in resolving disputes under the UDRP.
Based on WIPO decisions arising from a variety of contractual relationships among UDRP parties, the article offers recommendations for both licensors and licensees of trademarks.
For trademark licensors:
- Devise a domain name strategy for your trademarks – which top level domains, which combinations and variations of marks, which languages, etc.
- Regulate domain names in trademark license agreements.
- Recognize that domain name registrations may make trademarks more attractive.
- Monitor domain names for trademark infringement.
For trademark licensees:
- When registering a domain name, make a good-faith effort to avoid infringing anyone’s trademark rights.
- Acquire a domain name that incorporates a licensed trademark only if you can satisfy the following criteria: (i) you are offering the goods or services in question, (ii) you are using the website to sell only the trademarked goods or services (not your own goods or services or those of a third party), (iii) the site discloses your relationship to the trademark owner, and (iv) you are not depriving the trademark owner of the opportunity to acquire a domain name that reflects the mark.
- If you want to bring a UDRP complaint against a third party based on the licensed trademark, obtain the licensor’s consent to or involvement in the complaint.
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
Earlier this year, I helped a client recover an Internet domain name that a disgruntled former employee had hijacked shortly after his employment had been terminated.
I prepared a complaint under ICANN’s Uniform Domain-Name Dispute-Resolution Policy (the “UDRP”) and filed it with an ICANN-approved dispute-resolution provider.
Seven weeks later, the provider ruled in the client’s favor, and the domain name was returned. We were pleased, of course, but my client had to invest a lot of time, anxiety and money to achieve a successful resolution.
My experience in this matter suggests that there are simple, low-cost steps any business can take to protect its domain names against hijacking:
- List a responsible, high-level individual, rather than front-line staff, as the administrative contact on the domain name registration.
- Ensure that the company, rather than any individual employee, is recorded as the owner of the domain.
- Use domain locking, if your registrar offers it, to minimize the likelihood that a third party will be able to modify your registration.
- Keep registrant, administrative and technical contact information up to date, especially in the event of a staff departure.
- Establish procedures for a high-level individual to control domain passwords, and change those passwords immediately before terminating any staff who know them.
- Keep track of expiration dates so you can renew domains on time rather than lose them.
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
Cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from a trademark belonging to someone else. NBA superstar Chris Bosh recently won a major victory against a serial cybersquatter.
On September 24, the U.S. District Court for the Central District of California granted an order requiring that Luis Zavala transfer all of his domain name holdings to Bosh. (A list of those holdings is available on the Downloads page as “Chris Bosh – Domain Names Awarded”.) This award is particularly significant because it is, to the best of my knowledge, the first time that a party has been awarded domain names that profit from third parties’ trademarks.
Bosh has offered to make the domain names available to the applicable trademark owners at no charge through his social media firm Max Deal Technologies.
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
September 11th, 2009
Dana
Twice within the past 24 hours, a client has contacted me with concerns about trademark protection. In each instance, the concerns were caused by an e-mail that offered specified domain names in Asia. I will describe the e-mails in detail so you will know to be on guard if you receive anything similar:
- The subject line includes terms such as “copyright” or “intellectual property.”
- The text indicates that the sending company, an Internet domain registrar located in Asia, has received a request to register domain names with country codes in Asia that are similar to a “trademark” (more precisely, a domain name) that you own. For example, if you own <universalwidgets.com>, the e-mail might state that there are requests to register <universalwidgets.cn> and <universalwidgets.asia>.
- The e-mail then offers you an opportunity to protect your trademark by buying the Asian domain names yourself, rather than letting them be purchased by the third party. However, to take advantage of this opportunity, you must act quickly.
- The individual ostensibly sending the e-mail has an Americanized name, such as “John Zhou” or “Adam Hao”.
Do not waste you time replying – this e-mail is a scam! Based on Internet research, I determined that even if the sending company really is an Internet registrar, the price for the domain names will be way too high. If you really want the domain names, you might as well buy them through your existing Internet service provider at a substantially lower price.
Which brings us to a larger point: You should buy a country-specific domain name only if you consider it important to do business in that country. And if the country is that important, you should look into registering your trademarks there, too.
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
