TM Office Comes to CA Shootout at the ICANN Corral: Domainers vs. Trademark Owners vs.com ®

TM Office Comes to CA Mike Rodenbaugh Mike Rodenbaugh was formerly Yahoo!’s primary attorney in charge of intellectual property enforcement. In 2007, Mike started his own firm assisting intellectual property owners.

TM Office Comes to CA David J. Steele David J. Steele specializes in Internet law at Christie, Parker & Hale in Newport Beach. Mr. Steele also teaches Trademark and Internet Law at Loyola Law School. An expert on Internet law and technology, Mr. Steele has successfully handled hundreds of Internet cases, typically for famous trademark owners. Mr. Steele holds a B.S., Electrical and Computer Eng., CS Polytechnic University, Pomona, and a J.D. from Loyola Law School

TM Office Comes to CA John Berryhill John Berryhill has represented domain name registrants and trademark claimants in numerous UDRP proceedings and federal court proceedings under the ACPA. John has been a longtime advocate for the rights of domain registrants in ICANN working groups and task forces relating to intellectual property and other domain policy issues, and is a former treasurer of the Registrar Constituency. UDRPICANN UDRPICANN

TM Office Comes to CA Outline of Presentation The Big Picture The Big Picture Domain Tasting, Kiting and Front-running Domain Tasting, Kiting and Front-running UDRP UDRP Cases of Note Cases of Note Related Issues of Note (i.e. rule changes) Related Issues of Note (i.e. rule changes) Practice Pointers Practice Pointers ACPA ACPA Cases of Note Cases of Note ICANN policy developments ICANN policy developments Q&A Q&A

TM Office Comes to CA The Big Picture What’s going on - from a TM owner’s point of view What’s going on - from a TM owner’s point of view Increased cybersquatting (due to tasting and kiting) Increased cybersquatting (due to tasting and kiting) By more sophisticated and nefarious squatters By more sophisticated and nefarious squatters Falsifying WHOIS or moving overseas to avoid ACPA Falsifying WHOIS or moving overseas to avoid ACPA What’s going on - from a Domainer’s point of view What’s going on - from a Domainer’s point of view Over-reaching TM owners Over-reaching TM owners Claims against generic domain names Claims against generic domain names Questionable ethics in prosecuting complaints Questionable ethics in prosecuting complaints

TM Office Comes to CA Domain Name “Tasting” Register and “taste” name for 5 days Register and “taste” name for 5 days Return domain names for full refund Return domain names for full refund Measure traffic via Pay Per Click ads Measure traffic via Pay Per Click ads Keep profitable domain names Keep profitable domain names Monetize domain names Monetize domain names Misdirect customer Misdirect customer Get paid by advertisers (e.g., Google’s AdSense) Get paid by advertisers (e.g., Google’s AdSense)

TM Office Comes to CA

9 Domain Tasting - Scope March 2005 – Nearly 43 million.com and net domain names registered. March 2005 – Nearly 43 million.com and net domain names registered. Only 2.5 million names were deleted that same month. Only 2.5 million names were deleted that same month. In April of 2006, 35 million names registered. In April of 2006, 35 million names registered. Of those names 32.7 million were deleted within the 5-day Add Grace Period Of those names 32.7 million were deleted within the 5-day Add Grace Period

TM Office Comes to CA

TM Office Comes to CA Domain Name Kiting Repetitive Tasting Repetitive Tasting Registrars and registrants taste (monetize) domain names in bulk and delete them Registrars and registrants taste (monetize) domain names in bulk and delete them Then, using an automated process, they automatically re-register them... again and again. Then, using an automated process, they automatically re-register them... again and again. Often through affiliated entities, in effort to evade detection Often through affiliated entities, in effort to evade detection

TM Office Comes to CA Front-running Aka Domain Name Spying Aka Domain Name Spying Registrar obtains information that a domain name is of interest to a consumer Registrar obtains information that a domain name is of interest to a consumer They monitor the WHOIS queries They monitor the WHOIS queries Then the Registrar “registers” the domain name if the consumer doesn’t immediately register it Then the Registrar “registers” the domain name if the consumer doesn’t immediately register it This prevents the consumer from registering the domain name at another registrar This prevents the consumer from registering the domain name at another registrar Also prevents cybersquatters from registering Also prevents cybersquatters from registering

TM Office Comes to CA Domain Registrants’ view TM Owners believe they have monopolies in “dictionary words” or phrases TM Owners believe they have monopolies in “dictionary words” or phrases TM Attorneys engage in unethical tactics to attempt to entrap domain registrants TM Attorneys engage in unethical tactics to attempt to entrap domain registrants Internet Service Providers and others are competing for advertising revenue Internet Service Providers and others are competing for advertising revenue

ISP Use of Non-registered Domains TM Office Comes to CA

TM Office Comes to CA Review of Available Domain Name Remedies Uniform Dispute Resolution Policy (UDRP) Uniform Dispute Resolution Policy (UDRP) Arbitration procedure mandated by ICANN via domain name registration agreement Arbitration procedure mandated by ICANN via domain name registration agreement Rapid Time Scale – No Monetary Damages Rapid Time Scale – No Monetary Damages Anti-cybersquatter Consumer Protection Act (ACPA) – 15 USC 1125(d) Anti-cybersquatter Consumer Protection Act (ACPA) – 15 USC 1125(d) in personam in personam in rem in rem

Jurisdictional Issues Many cybersquatters are either overseas or lie about being overseas… Many cybersquatters are either overseas or lie about being overseas… hard to track down hard to track down Creates jurisdictional issues under US law Creates jurisdictional issues under US law US Courts will not enforce foreign marks US Courts will not enforce foreign marks

TM Office Comes to CA UDRP Elements Domain Name is identical or confusingly similar to a trademark in which Complainant has rights Domain Name is identical or confusingly similar to a trademark in which Complainant has rights Respondent has no legitimate rights in the Domain Name Respondent has no legitimate rights in the Domain Name bona fide use or preparation to use prior to notice of a dispute bona fide use or preparation to use prior to notice of a dispute Domain Name was registered and used in bad faith Domain Name was registered and used in bad faith demonstrated specific intent demonstrated specific intent

TM Office Comes to CA Recent UDRP Cases of Note Reseller makes bona fide offering and thus legitimate use? Reseller makes bona fide offering and thus legitimate use? NASCARtours.com – Respondent prevails because he offers ‘only tours of NASCAR events’ and provides prominent disclaimer NASCARtours.com – Respondent prevails because he offers ‘only tours of NASCAR events’ and provides prominent disclaimer GE-Merlin.com – Complainant prevails because of likely initial interest confusion, despite sale only of Merlins, and prominent disclaimers GE-Merlin.com – Complainant prevails because of likely initial interest confusion, despite sale only of Merlins, and prominent disclaimers

Recent UDRP Cases of Note MySpace.co.uk (Nominet) – Complainant prevails though domain registered six years before MySpace existed, but was used only for PPC ad site MySpace.co.uk (Nominet) – Complainant prevails though domain registered six years before MySpace existed, but was used only for PPC ad site TheEconomist.com – Respondent prevails as he swears he had never heard of the magazine when he registered the domain, and showed a picture of “Alan Greenspan – The Economist of the Century” at site TheEconomist.com – Respondent prevails as he swears he had never heard of the magazine when he registered the domain, and showed a picture of “Alan Greenspan – The Economist of the Century” at site TM Office Comes to CA

TM Office Comes to CA UDRP Related Issues of Note Each UDRP Provider implements its own procedural rules Each UDRP Provider implements its own procedural rules Naming Respondents Naming Respondents If “privacy service” is listed as the registrant, registrar will change the owner when a UDRP complaint is filed –requiring an amendment to the Complaint. Supplemental Filings Supplemental Filings

TM Office Comes to CA UDRP Practice Pointers Always request transfer; never cancel Always request transfer; never cancel Treat the Complaint like a motion for summary judgment Treat the Complaint like a motion for summary judgment Follow up to make sure the name is transferred and that it doesn’t resolve to the old website Follow up to make sure the name is transferred and that it doesn’t resolve to the old website The registrar is responsible for transferring the domain name The registrar is responsible for transferring the domain name

TM Office Comes to CA ACPA Cases of Note Vulcan Golf et al. vs. Google et al. (USDC N.D. IL,; Case No. 07-Civ-3371) Vulcan Golf et al. vs. Google et al. (USDC N.D. IL,; Case No. 07-Civ-3371) Class action against registrants, parking companies, and advertisers Class action against registrants, parking companies, and advertisers Motion to dismiss denied in part (RICO and some state claims dismissed; federal TM claims remain) Motion to dismiss denied in part (RICO and some state claims dismissed; federal TM claims remain) Dell and Yahoo! et al v. BelgiumDomains et al (USDC S.D. FL; Case No. 07-Civ-22674) Dell and Yahoo! et al v. BelgiumDomains et al (USDC S.D. FL; Case No. 07-Civ-22674) Civil case for cybersquatting, counterfeiting, TM infringement Civil case for cybersquatting, counterfeiting, TM infringement Federal seizure raid conducted with US Marshals Federal seizure raid conducted with US Marshals Pre-judgment asset freeze (+1 million domain names and millions of dollars) Pre-judgment asset freeze (+1 million domain names and millions of dollars)

TM Office Comes to CA Policy and Legislative Developments Coalition Against Domain Name Abuse (CADNA) Internet Commerce Association (ICA) ICANN Registries (not VeriSign) – deterring tasting / kiting Registries (not VeriSign) – deterring tasting / kiting ICANN – “taxing” tasting / kiting through registration fees ICANN – “taxing” tasting / kiting through registration fees ICANN – studying “front-running” ICANN – studying “front-running”

TM Office Comes to CA Questions?

TM Office Comes to CA Contact Info Mike Rodenbaugh Mike Rodenbaugh David Steele David Steele John Berryhill John