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
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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
@bjw72
44
Sarah B. Deutsch Verizon Communications
Sara B. Blotner
Citigroup