Evaluating the New URS vs. UDRP:

Navigating the Alternatives for

Trademark Enforcement of Domain Names Strategies for Brand Protection, Leveraging Recent Decisions, Weighing the Pros and Cons

Today’s faculty features:

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WEDNESDAY, AUGUST 27, 2014

Presenting a live 90-minute webinar with interactive Q&A

Sara B. Blotner, Associate General Counsel, Citigroup, Long Island City, N.Y.

Sarah B. Deutsch, Vice President & Deputy General Counsel, Verizon Communications,

Arlington, Va.

Brian Winterfeldt, Partner, Katten Muchin Rosenman, Washington, D.C.

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Domain Name Enforcement in

New gTLDs: The URS, UDRP

and Beyond

August 27, 2014

Brian Winterfeldt

Head of Katten’s Internet practice with 15 years of experience

in trademark portfolio, domain name and other Internet

matters.

Member of INTA’s Internet and Trademark Administrators

Committees (serves as Advisor) and ICANN’s Intellectual

Property Constituency (serves as representative on the

Generic Names Supporting Organization Council).

Frequent author and speaker on cutting-edge Internet issues.

Gold ranking in World Trademark Review 1000 (listing of top

trademark professionals globally).

Practice encompasses global leaders in the retail and

apparel, media, financial services, consumer products, food

and beverage, hospitality, and Internet and technology

industries.

5

Sarah Deutsch

Vice President and Deputy General Counsel

at Verizon Communications.

Manages Verizon’s trademark, copyright and patent licensing

practice. Deals with legal issues related to global Internet

policy, including liability, intellectual property policy, ICANN and

Internet jurisdiction.

Currently chairs INTA’s Internet Advocacy Subcommittee and

serves on ICANN’s Nominating Committee.

Involved in several high profile cases at Verizon, including two

suits in which Verizon was awarded more than $33 million and

$23 million from cybersquatters.

Also worked on the UDRP and was one of the five negotiators

for the telecom industry that negotiated the DMCA.

6

Sara Blotner

Associate General Counsel for Intellectual Property at

Citigroup Inc.

Primary practice areas include worldwide trademark

counseling, clearance, prosecution and conflicts, right of

publicity, corporate transactions, licensing, internet and

social media.

Has lectured on intellectual property issues for the

International Trademark Association, Foley and Lardner,

Holland and Knight, Kilpatrick Stockton, Lawyer’s Alliance,

National Association of Women Lawyers, NYIPLA,

Practicing Law Institute, Pro Bono Partnership and ALM.

Currently handling two gTLD applications filed by Citigroup

for .CITI and .BANAMEX, and is also responsible for

enforcement in the gTLD space.

7

ICANN Basics

Internet Corporation for Assigned Names and Numbers.

Formed in 1998.

Not-for-profit public benefit corporation incorporated in

California; international in nature.

Dedicated to keeping the Internet secure, stable and

interoperable.

Promotes competition and develops policy on the Internet’s

unique identifiers.

8

Domain Name Registration Hierarchy

Registry – organization such as Verisign in charge of database

of domains ending with a particular top-level domain (including

gTLDs such as .com or .net and ccTLDs such as .us or .jp).

Registrar – organization such as CSC, Network Solutions, or

GoDaddy that sells rights to use particular second-level

domains (such as citi.com or kattenlaw.com).

Registrant – user who purchases right to use a second-level

domain for a designated period of time (e.g., Katten Muchin

Rosenman LLP for the kattenlaw.com domain name).

9

Anatomy of a Domain Name

10 Source: icann.org

Overview of the New gTLD Program

“Old” gTLDs vs. “new” gTLDs:

– Previously 23 gTLDs in operation (e.g., .com, .net and .org).

– ICANN program allowed applicants to create their own

(e.g., .bank, or .law).

– Successful applicants become Internet registries.

– Includes internationalized domain names (IDNs) such as Arabic,

Cyrillic and Lao allowing for non-ASCII characters.

– 1930 complete applications submitted; approximately 700

expected to be open to third parties.

– First new gTLDs went live Q4 2013; 250+ delegated to date.

11

Evolution of the Internet Through New gTLDs

12

New gTLD Growth

13

New gTLD Program Update Timeline

14 Source: ICANN June 2014

Sampling of .BRAND Applications

15

Sample .GENERIC Applications

16

Rights Protection Mechanisms (RPMs)

Traditional

– Demand Letter (Registrant and ISP)

– Uniform Domain-Name Dispute-Resolution Policy (UDRP)

New

– Trademark Clearinghouse (Claims Service and Sunrise)

– Uniform Rapid Suspension System (URS)

– Block Lists

17

New gTLD Brand Protection:

Trademark Clearinghouse (TMCH)

Purpose – central repository for information to be

authenticated, stored, and disseminated pertaining

to rights of trademark holders.

Benefits (both mandatory for all new gTLD registries):

1) Sunrise Eligibility (Proof of Use Required)

a) Allows early domain name registration in eligible new gTLDs.

2) Trademark Claims Service

a) Warns and hopefully deters potential registrants of possible

trademark infringement.

b) Notifies brand owners when matching name registered.

18

Trademark Clearinghouse Basics

Registrations available for 1- 3- and

5-year terms.

Filing fee about $150 per mark per year,

plus service provider submission fees.

Permitted up to 50 “previously abused names”

for Claims Service.

Proof of Use required for eligibility to Sunrise and other RPMs.

19

Trademark Clearinghouse: Proof of Use

1) Signed Proof of Use Declaration; and

– By someone with authority to sign on behalf of trademark

holder.

2) Proof of Use Sample

– Labels, tags, or containers from a product;

– Advertising and marketing materials including brochures,

pamphlets, catalogues; or

– Product manuals, displays or signage, press releases,

screen shots, or social media marketing materials.

20

New gTLDs – Rights Protection Mechanisms

21

Post-

Launch

Uniform

Domain-Name

Dispute-Resolution

Procedure (UDRP)

An independent administrative proceeding

to resolve disputes between trademark

owners and registrants over alleged

abusive domain name registrations and a

quicker and cheaper alternative to court.

Uniform Rapid

Suspension System

(URS)

Intended to provide even faster relief to

trademark holders for the most clear-cut

cases of infringement.

Trademark

Post-Delegation

Dispute Resolution

Procedure

(Trademark PDDRP)

For trademark holders to address any

registry complicity in large-scale

infringement where the registry profits from

bad faith registrations.

New Enforcement Mechanism:

Uniform Rapid Suspension System (URS)

Purpose – to provide a low-cost and rapid means

for taking down infringing domain name registrations

in the case of clear trademark abuse.

Complaint must meet the following criteria:

– Domain name at issue identical/confusingly similar to

Complainant’s valid registered (or otherwise validated/protected)

mark.

– Registrant has no legitimate right/interest to domain name.

– Domain registered and being used in bad faith.

Only remedy is disabling (not recovering) the infringing domain

name.

22

URS vs. UDRP Comparison

URS Highlights

Lower cost

Quicker decisions

Automated/self-service

Entirely web-based

Portal is *required*

Case coordinators still

available

Differences From UDRP

Suspension vs. transfer

Single examiner

Higher burden of proof

Extended response period

for default cases

Multiple determinations:

default, final, appeal

URS Complaints

Entered online; you can use your current login information.

Documents are linked to each domain name.

Always entered in English.

Deficiency check is mostly performed through validation steps;

empty fields mean the case will be rejected.

Must submit proof of trademark rights and proof of use, which can

be a relevant SMD file from the Trademark Clearinghouse.

Must include domain name at issue, its Whois and Screenshot.

Standard URS elements are available by check box, plus may

make additional arguments of no more than 500 words in a free

form text box.

24

Online Filing View: Agreements Page

25

URS Requires that you agree to

certain terms before proceeding.

Online Filing View: Trademark and Evidence

26

For each domain name,

enter the information

required under URS 1.2.6.

Online Filing View: Substance

27

The Complaint is a

series of check

boxes, per the URS.

You have 500 words

of explanation.

Online Filing View: Trademark and Evidence

28

For each domain name,

enter the information

required under URS 1.2.6.

Online Response Filing

29

You can view the

Complaint and all

annexes by clicking

on the links.

URS Appeals

Must be filed within 14 days of Default or Final Determination.

Review is de novo of existing record.

Appellant must provide grounds for appeal.

Appellant has limited right to introduce new evidence.

Who can appeal?

– Any losing party with a Final Determination.

– A complainant with any determination that finds abuse or material

falsehood.

– But not a complainant that lost a Default case (must re-file).

30

URS Proceedings to Date

As of July 30, 2014, 88 cases were filed with NAF, whereas zero

were filed with the only other ICANN-accredited service provider,

Asia Domain Name Dispute Resolution Center (ADNDRC).

75 cases had reached a decision with only 9 complaints rejected by

Examiners—roughly an 88% success rate.

37 respondents have defaulted overall—roughly a 49% default rate.

Of respondents who defaulted, a total of 34 ultimately had their

domain names suspended—roughly a 92% success rate upon

default; only slightly higher than the success rate for all cases.

In certain cases, Examiner ex officio review covered complainant

trademark registrations, as well as respondent reverse WHOIS

searches, often revealing indicia of bad faith in large portfolios full of

domains similar to famous brand names.

31

URS Case Study – Gandiyork SL

Serial cybersquatter

– Based in Gandía, Valencia, Spain.

– Registers a myriad of domain names corresponding to

famous trademarks worldwide.

– Fabricates evidence supporting legitimate interests.

– Large portfolio of domain names can be considered

“indicia of bad faith.”

32

Gandiyork URS Proceedings

Lidl Stiftung v. Gandiyork (lidl.land)

– Suspended

Deutsche Lufthansa v. Gandiyork (lufthansa.land)

– Suspended

Media-Saturn-Holding GmbH v. Gandiyork

(mediamarkt.land)

– Suspended

33

Gandiyork URS Proceedings

Banco Bilbao Vizcaya Argentaria v. Gandiyork

(bbva.land)

– Land services to neighboring towns of Bellreguart,

Beniarjo, Villalonga, and Almoines (BBVA!)

– Complainant did not meet its burden; question of fact

existed.

– Domain name retained.

34

The UDRP Procedure

Administrative proceeding before the World Intellectual

Property Organization (WIPO), National Arbitration Forum

(NAF), Asian Domain Name Dispute Resolution Centre

(ADNDRC), Czech Arbitration Court Arbitration Center for

Internet Disputes, or Arab Center for Domain Name

Dispute Resolution (ACDR).

Generally much faster and less expensive than litigation

(but slower and with a higher filing fee than the URS).

Only remedies are recovery or cancellation of the

infringing domain name—no damages available.

35

The UDRP Procedure

Registries that do not offer the UDRP may offer other

similar dispute resolution procedures (i.e., Nominet, the

registry for .uk domain names, offers its own Dispute

Resolution Service (DRS)).

ccTLDs usually either adopt the UDRP or a similar

procedure.

36

UDRP Eligibility

Domain name(s) at issue must be identical or confusingly

similar to a trademark or service mark in which the

Complainant has rights.

Respondent must have no right or legitimate interest in

the domain name(s).

Domain name(s) must be registered and used in bad

faith.

All of the above are required—other problematic domain

names are not eligible.

37

New Enforcement Mechanism: Trademark

Post-Delegation Dispute Resolution Procedure

(Trademark PDDRP)

Purpose – to provide a means for IP Owners to hold registries

accountable for inducing or supporting trademark infringement.

Trademark owners will be required to demonstrate, by clear

and convincing evidence:

a) Affirmative conduct by a registry at the top level that

infringes a trademark; and/or

b) At the second level, affirmative conduct by a registry that

amounts to a substantial pattern or practice of specific bad-

faith intent by the registry to profit from the sale of domain

names that infringe trademark rights.

38

New Enforcement Mechanism: Trademark

Post-Delegation Dispute Resolution Procedure

(Trademark PDDRP)

A registry operator is not liable under the PDDRP solely

because infringing names are in its registry, or the registry

operator knows infringing names are in its registry, or it did not

monitor names registered in its registry.

Remedies are generally limited to remedial measures and

costs, or in extreme circumstances, termination of the registry.

Challenges: May be difficult to establish proof by clear and

convincing evidence absent litigation and discovery.

39

New RPMs: Registration Block Lists

Purpose – preemptive block of domains (with some exceptions) that

match or contain eligible TM across multiple TLDs.

Most popular – Donuts’ Domains Protected Marks List (DPML).

– Cannot be used for an active website, redirection, email, etc.

– Per TLD override available for a nominal fee.

Requires TMCH-verified TM (with Proof of Use).

Approximately $3,000 filing fee for 5-year block.

– Donuts expected to operate ~200 registries, equivalent to

approximately $3 per domain name block per year.

– Consider for your most important brands.

40

Litigation

1999 Federal Anti-cybersquatting Consumer Protection Act

– Defendant has registered, trafficked in, or used a domain name

that is identical or confusingly similar to a mark owned by plaintiff.

– Defendant committed the act with a bad faith intent to profit from

plaintiff’s mark.

– Court balances 9 factors to establish bad faith intent

41

Litigation - Damages

Can sue registrant and [possibly] courts divided on whether the

registrar can be sued for contributory infringement.

Traditional trademark damages / statutory damages between $1000-

$100,000 per infringing domain name.

Must establish in personam jurisdiction.

Challenges – Establishing jurisdiction in cases where registry,

registrar and registrant may be located outside the US.

No other country currently has anti-cybersquatting legislation.

42

Next Steps for Brand Owners

Assess trademark portfolio and consider participation

in the Trademark Clearinghouse.

Determine Sunrise or other second-level registrations in new gTLDs,

for defensive purposes or potential proactive use.

Review overall domain name registration and portfolio management

strategy – can assist with determining appropriate enforcement

mechanism (monitoring, URS, UDRP or other).

Consider litigation for most egregious infringement cases where

damages may be warranted.

Pursue opportunities to engage in ICANN policy development in

connection with rights protection mechanisms and other brand owner

interests.

43

Thank you!!!

Brian J. Winterfeldt Head of Internet Practice

Katten Muchin Rosenman LLP

+1.202.625.3562

brian.winterfeldt@kattenlaw.com

@bjw72

44

Sarah B. Deutsch Verizon Communications

sarah.b.deutsch@verizon.com

Sara B. Blotner

Citigroup

blotners@citi.com