Leveraging the Trademark Clearinghouse: Protecting Marks Under ICANN's gTLD System Strengthening Patent Portfolios, Correcting Patents,
and Understanding the Risks and Limitations of Reissue
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
TUESDAY, NOVEMBER 18, 2014
Presenting a live 90-minute webinar with interactive Q&A
Deborah M. Lodge, Partner, Squire Patton Boggs, Washington, D.C.
Monica Riva Talley, Director, Sterne Kessler Goldstein & Fox, Washington, D.C.
Anna B. Naydonov, Esq., Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
Sound Quality
If you are listening via your computer speakers, please note that the quality
of your sound will vary depending on the speed and quality of your internet
connection.
If the sound quality is not satisfactory, you may listen via the phone: dial
1-866-570-7602 and enter your PIN when prompted. Otherwise, please
send us a chat or e-mail [email protected] immediately so we can
address the problem.
If you dialed in and have any difficulties during the call, press *0 for assistance.
Viewing Quality
To maximize your screen, press the F11 key on your keyboard. To exit full screen,
press the F11 key again.
FOR LIVE EVENT ONLY
For CLE purposes, please let us know how many people are listening at your
location by completing each of the following steps:
• In the chat box, type (1) your company name and (2) the number of
attendees at your location
• Click the SEND button beside the box
If you have purchased Strafford CLE processing services, you must confirm your
participation by completing and submitting an Official Record of Attendance (CLE
Form).
You may obtain your CLE form by going to the program page and selecting the
appropriate form in the PROGRAM MATERIALS box at the top right corner.
If you'd like to purchase CLE credit processing, it is available for a fee. For
additional information about CLE credit processing, go to our website or call us at
1-800-926-7926 ext. 35.
FOR LIVE EVENT ONLY
If you have not printed the conference materials for this program, please
complete the following steps:
• Click on the ^ symbol next to “Conference Materials” in the middle of the left-
hand column on your screen.
• Click on the tab labeled “Handouts” that appears, and there you will see a
PDF of the slides for today's program.
• Double click on the PDF and a separate page will open.
• Print the slides by clicking on the printer icon.
FOR LIVE EVENT ONLY
Leveraging the Trademark
Clearinghouse:
Protecting Marks Under
ICANN's gTLD System
Deborah M. Lodge, Partner
Squire Patton Boggs (US) LLP
Washington, DC 202-457-6030
November 18, 2014
6 squirepattonboggs.com 6 squirepattonboggs.com
Review
1. Background: Expansion of Internet and Explosion of Top
Level Domains (TLDs)
2. Trademark Clearinghouse (TMCH) Basics
3. Registration in TMCH
4. Benefits and Limitations of the TMCH
7 squirepattonboggs.com 7 squirepattonboggs.com
Expansion of Internet
Pre-2013: limited number of TLDs: .com, .org, .biz,
various Country Codes, such as .tv, .us, .de, .cn.
ICANN opened up the Internet skies in 2012.
Result: numerous “generic Top Level Domains” (gTLDs)
and .Brands coming online.
Now: 431 TLDs launched as of 11-10-2014; over 1400
TLDs expected.
Early November 2014:
Launch of .HOW and .WHOSWHO
Quite popular: .EXPERT, .GURU. .XYZ
GeoTLDs: .NYC, .PARIS, .VEGAS
8 squirepattonboggs.com 8 squirepattonboggs.com
gTLD Allocation as of November 10, 2014
9 squirepattonboggs.com 9 squirepattonboggs.com
Iloveyou.diamonds
10 squirepattonboggs.com 10 squirepattonboggs.com
Trademarks In Peril!
Proliferation of gTLDs raised concerns about:
Trademark Infringements
Cybersquatting
Phishing
Typosquatting
Solution: TRADEMARK CLEARINGHOUSE
To increase protections for trademark owners.
11 squirepattonboggs.com 11 squirepattonboggs.com
What is the Trademark Clearinghouse?
TMCH: a Database and Notice System
Database of Trademarks Meeting Certain Criteria
All gTLDs must check against the TMCH Database for new domain name registrations
“Claims Period”: 90 days after each TLD opens for general registration. Notice given to Domain Name applicants if their selection is a “direct match” of a Trademark in the TMCH System.
Notice to TMCH Registrants during Claims Period and “Ongoing Notice Period”
12 squirepattonboggs.com 12 squirepattonboggs.com
TMCH Criteria for Registration
To qualify for TMCH Registration, a
trademark must be:
Nationally registered – e.g., USPTO
Protected by law or treaty – e.g., “Olympics” or
“Red Cross”
“Court-validated” unregistered
marks
Word marks; not logos or design marks
“Abused” marks
13 squirepattonboggs.com 13 squirepattonboggs.com
BENEFITS OF TMCH
REGISTRATION
TMCH Registrants get notice if someone has
registered a domain name that is identical to their
TMCH-registered mark.
Delta.plumbing
Delta.voyage
Delta.aero
Domain name registrants get notice during the
90-day Claims Period if their chosen domain
name matches a TMCH Registration – could be
used later to show knowledge and willfulness.
14 squirepattonboggs.com 14 squirepattonboggs.com
BENEFITS OF TMCH
REGISTRATION
TMCH Registrants can participate in TLD
“Sunrise” Periods
IF proof of actual use submitted to TMCH.
Sunrise Period: TMCH Registrants get
priority period for registering trademarks
as domain names in new gTLDs.
15 squirepattonboggs.com 15 squirepattonboggs.com
LIMITATIONS OF TMCH
REGISTRATION
IT’S ONLY NOTICE: The “infringer” can
still register the infringing domain name.
Only applies to Direct Hits.
The TM Owner will need to take action:
• URS: Uniform Rapid Suspension
• UDRP: Uniform Dispute Resolution
Procedure – for Domain Names
• Infringement Suits, Cease & Desist Letters
16 squirepattonboggs.com 16 squirepattonboggs.com
INNOVATIONS
BLOCKING SERVICES: DPML (Domain
Protected Mark List)
Some registries (e.g., Donuts and Rightside)
Offer Blocking Services:
Will block TMCH-registered mark across all THEIR
gTLDs
Can include “marksucks” and other variations
Some exceptions: “premium” domain names – per
gTLD
Trademark owner may trump a block (“Block Override”)
17 squirepattonboggs.com 17 squirepattonboggs.com
LIMITATIONS OF TMCH
REGISTRATION
Only EXACT MATCHES trigger notices
Example: GUCCEE or GUCCIS would not
trigger notice if GUCCI registered in TMCH
Word marks only – no logos or designs
BUT: If word portion distinct, that can be
registered.
If mark uses a * or @, can be
registered. But no design elements will be
included.
18 squirepattonboggs.com 18 squirepattonboggs.com
LIMITATIONS OF TMCH
REGISTRATION
TMCH Registration is Not Public
So limited information on registered entities and
marks.
Notices need follow-up review
Infringement may not be clear:
• Surnames, Descriptive Marks, Common
Terms
TMCH registrations must be renewed
periodically. Enrollment usually 1, 3, or 5 years.
19 squirepattonboggs.com 19 squirepattonboggs.com
RISKS of TMCH REGISTRATION
Some investment
Some monitoring and policing
Could lead to increased litigation
BUT: Relatively Few Risks for Some
Additional Protection
20 squirepattonboggs.com 20 squirepattonboggs.com
WEIGHING BENEFITS
Controversies remain.
Whether notice is helpful.
Whether leads to increased litigation and dispute.
Whether substantially adds to trademark
protections.
Statistics show use of TMCH is growing.
21 squirepattonboggs.com 21 squirepattonboggs.com
TMCH Statistics as of September 2014
22 squirepattonboggs.com 22 squirepattonboggs.com
Questions or Comments?
Deborah Lodge, Partner
Squire Patton Boggs
2550 M St. NW
Washington D.C.
202-457-6030
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Leveraging the Trademark Clearinghouse:
Protecting Marks Under ICANN’s gTLD
System
Presented by Anna B. Naydonov
Phone: (202) 679-7599
Email: [email protected]
24 24
TMCH RIGHTS PROTECTION
MECHANISMS
25 25
TMCH Rights Protection Mechanisms
• Sunrise Period: Priority period (minimum 30
days); allows trademark owners to register domain
names identical to their trademarks before
registration opens to the general public
if multiple marks match a domain name, TMCH will
decide who gets the domain name (sometimes
through “first-come, first served” process or via a
bidding procedure)
26 26
TMCH Rights Protection Mechanisms
• Trademark Claims Service: Warning to
prospective applicant for domain name identical
to a record in the TMCH; if applicant proceeds,
trademark owner receives notice that a domain
name matching its trademark has been registered.
opens when Sunrise period ends
500,000 notices sent, 95% of recipients chose not to
pursue registration (March 2014)
27 27
Domain Protected Marks List
28 28
Donuts’ Domains Protected Marks List (DPML)
29 29
• Rightside is another domain registry, smaller than
Donuts
• DPML registration with Rightside lasts for one
year. It plans to begin offering longer durations at
a later point.
• Registration can be for the exact match of the
trademark, a variation of the trademark, or the
trademark plus a variation.
30 30
UNIFORM RAPID SUSPENSION
31 31
What Is URS
• Abbreviated dispute resolution procedure only for gTLD
strings created or delegated after Jan. 1, 2013 (i.e., not .com,
.net, .us, etc.)
• Cheaper than UDRP: $375
• Fast: about 3 weeks (from filing Complaint to decision)
• Standard: clear and convincing evidence
There can be no issues of fact; reserved for straightforward
cases of infringement
• Remedy: suspension of domain name for the duration of
registration term
Unlike UDRP, does NOT award ownership of the domain to the
prevailing party
32 32
What Is URS (cont’d)
• Two providers: National Arbitration Forum and Asian Domain
Name Dispute Resolution Centre
• Can be filed online; 500 word limit for submission (but can
attach exhibits, e.g., evidence of registrant’s bad faith)
• Once Complaint filed, the disputed domain placed on “lock”
• Once “lock” confirmed, registrant receives notice and has 14
days to submit a response
• Decision 3-5 business days after the response
• De novo appeal (must be filed within 14 days of decision)
new evidence may be introduced, but must predate the filing of the original
URS complaint
33 33
URS Elements
• Requires proof of the following three elements by
clear and convincing evidence.
1.) The disputed domain is confusingly similar to a
registered word mark.
2.) The registrant had no legitimate rights in the domain
name.
3.) The registrant registered and used the domain in bad
faith.
34 34
URS Stats
• As of Nov. 11, 2014, 164 URS proceedings filed
with NAR and 19 with the Asian Domain Name
Dispute Resolution Centre
• Vast majority of cases: disputed domain
suspended
35 35
BAS Services & Graphics, LLC v. QA Graphics
• The Complainant’s word mark must be (1) subject to national or
regional registration and be in use; (2) validated through court
proceedings; (3) or specifically protected by a statute or treaty
[URS 1.2.6.1]
• BAS Services relied on “name certificate” filed with the State of
Texas, annual report, 2008 Florida Articles of Organization: “the
proceedings have been brought under the misapprehension that
Complainant may rely on common law rights”
• Complaint denied
Complaint submitted: Feb. 24, 2014
Decision: March 13, 2014
36 36
Facebook Inc. v. Radoslav
• Challenged the domain www.facebok.pw
• First case filed under the URS
• Facebook showed by clear and convincing evidence:
1.) Domain was confusingly similar to its registered word mark.
2.) Registrant had no legitimate rights in the domain name.
3.) Registrant registered and used the domain in bad faith (it was a
pay-per-click website).
Complaint submitted: Aug. 21, 2013
Decision: Sept. 27, 2013
37 37
Dana Ltd. v. Nawas
• Dana Holding Corp. challenged dana.holdings
Dana notified by TMCH, reached out to Registrant
• Registrant: “refused to address any of Dana’s concerns
including why he had a legitimate interest” in the domain;
“offered to sell the domain to Dana”
• Although “Dana” common female name, domain
suspended
Unlike many other URS decisions, attributed some weight to
“holding” TLD
Complaint submitted: Feb. 24, 2014
Decision: March 13, 2014
38 38
Heartland Payment Sys., Inc. v. Whois Privacy
Protection Servs., Ramsey
• Heartland is one of the largest payment processors in the
U.S.
• Challenged domain name heartland.holdings
• Complaint denied:
heartland.holdings is a “merely revenue-generating pay-per click
advertising site” with “sponsored” and “related” links, including to
“Heartland Payment” (but also “Heartland Tours,” “Heartland
College,” “Heartland Poker Tour,” etc.)
“heartland” is a “dictionary word”;
failed to establish “that the relevant trademark is exclusively and
most commonly associated with Complainant”
domain name not used “in a manner that is exclusively and strongly
associated with [the] trademark.”
Complaint submitted: Mar. 7, 2014
Decision: March 27, 2014
39 39
HOLA S.L. v. North Sound Names
• Challenged the domain hello.photo
• HOLA owner of the registered mark “HELLO!”
• Registrant in the business of acquiring domain
names that include “generic terms” for resale
• Complaint denied:
Failed to prove domain registered and used in bad faith;
“Previous decisions involving domain names based on
generic, commonly used terms consistently denied”;
To prevail, there must be “some other proof” of bad faith
(e.g., actual notice of TM prior to registration or a pattern of
registering protected marks). Complaint submitted: July 17, 2014
Decision: Aug. 9, 2014
40 40
• Virgin contested the domain branson.guru
• Registrant never filed a response
• Virgin lost because the examiner found:
1.) Virgin had not shown that it had strong rights in the
word mark BRANSON;
2.) Virgin had not shown by clear and convincing evidence
that the Registrant did not have any legitimate rights in
the domain name.
Virgin Enterprises Limited v. Lawrence Fain
Complaint submitted: Feb. 27, 2014
Decision: Mar. 20, 2014
41 41
• branson.guru used as “generic, monetized parking page for the registrar, Go
Daddy, which does not appear to include any references to Complainant,
Richard Branson, or the BRANSON trademark.”
Virgin Enterprises Limited v. Lawrence Fain
42 42
YoYo.Email
• registered a large number of brands as
brand.email eharmony.email
garnier.email
sanofi.email
lockheed.email
footlocker.email
geico.email
baskinrobbins.email
luefthansa.email
stuartweitzman.email
and many others …..
• “email courier service”
provides certification of delivery and potentially receipt of emails
use as “non-public, non-consumer facing, back-end email
server”
• $82,000 in registration fees for the brand.email domains; $170,000 in
overall development of its email services
43 43
Deutsche Lufthansa AG v. yoyo.email
• lufthansa.email
• Lufthansa has not authorized Respondent’s use of
the mark and has no affiliation with Respondent
• “Respondent did not present demonstrable
preparations to use the Domain Name in
connection with a bona fide offering of goods”
• domain name suspended
Complaint submitted: April 7, 2014
Decided: April 28, 2014
44 44
Foot Locker Retail, Inc. v. yoyo.email
• footlocker.email
• yoyo “concedes that it has sunk substantial economic
costs into the development of the system and that it
intends to recover those costs”
• “Because the system is built on a foundation that
includes [Footlocker’s] domain name, this is enough to
establish that the system is commercial in character and
that Respondent intends to obtain commercial gain from
the use of [Foot Locker’s] marks.”
• domain name suspended
Complaint filed: June 18, 2014
Decision: July 8, 2014
45 45
Stuart Weitzman IP, LLC v. yoyo.email
• Complaint denied on appeal
• yoyo argued that the service is “completely free”;
“not going to make use of any brand logo or
claim any affiliation with any .email it operates”
• Unlike Lufthansa, “no record evidence of
Respondent’s intent to monetize the free email
service” (although exact same business model at
issue)
Complaint filed: April 18, 2014
Decision: June 24, 2014
46 46
eHarmony, Inc. v. yoyo.email
• Complaint denied
• yoyo attached in response a copy of DJ
Complaint in the D. Ar.
• Based on documents submitted in the federal court
action, Examiner decided that eHarmony has not
demonstrated by “clear and convincing evidence”
that the domain name was registered and is being
used in bad faith
47 47
yoyo.email, LLC v. Playinnovation, Ltd.
• Declaratory judgment action in the United
States District Court for the District of Arizona
based on URS action against yoyo
• asked to declare yoyo’s business model non-
infringing, not a “trademark use”
• Nov. 5, 2014 Consent Motion for Declaratory
Judgment: “legitimate purpose to certify the sending and receipt of emails”
domain name restored to yoyo from suspension BUT
(1) disclaimer of no affiliation with Playinnovation in Terms of
Use and (2) disclaimer in the metadata for all email submitted
through playinnovation.email
48 48
Questions?
Anna B. Naydonov
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
(202) 679-7599
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. © 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
November 13, 2014
S K G F. C O M
Best Practices for Protecting Brands
in the New gTLD Landscape
Monica Riva Talley
202.772.8688
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 50 S K G F. C O M
What We Know
• ICANN expects more than 1300 new gTLDs to go live in the following
years; as of November 7, 432 new gTLDs were available
• As of now, approximately 3.1 million domain names had been registered
in the new gTLD space
• Right now we are seeing approximately 7 new registries launch every
week
• To date, the top five strings in terms of gTLD registrations list are:
1. .xyz 4. .berlin
2. .club 5. .photography
3. .guru
New gTLD Launch to Date
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 51 S K G F. C O M
What We Know (con’t)
• The most popular new string .xyz, which is marketing itself as an
alternative to the crowded .com registry, has amassed nearly 525,000
registrations alone
• World Trademark Review (WTR) recently
examined the .xyz domain registration of the
50 most valuable brands and found that 80%
had either registered or blocked their brand in
this space
• WTR’s review also found evidence of prevalent
cybersquatting; for example, a single individual
currently owns the domains names
“americanexpress,” “honda,” and “homedepot” in the .xyz space
New gTLD Launch to Date
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 52 S K G F. C O M
What We Know (con’t)
• Emerging economies have no legacy investment in .com names
• In March the Clearinghouse revealed that in excess of 500,000 Claims
Notices had been issued, and 95% of the infringing domain registrations
were no longer being pursued
• Many larger brands are taking advantage of blocking services offered by
providers such as Donuts and Rightside Registry
New gTLD Launch to Date
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 53 S K G F. C O M
What We Don’t Know
• Impact of new gTLDs on search engine results/brand visibility; how Google
and other search engines will change their algorithms to accommodate the
new gTLDs
• Impact of increased international use and access
• Consumer acceptance of new gTLDs
• How brands will exploit new gTLDs, will they become active marketplaces?
??? ???
New gTLD Launch to Date
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 54 S K G F. C O M
Activity to Date
• TMCH -- nearly 33,000 marks from 103 countries and
covering 119 jurisdictions have been submitted
• The TMCH will be accepting mark submissions and renewals
indefinitely
• On November 5 of this year, the first group of TMCH
registrations was up for renewal
• Utilization of the TMCH is uneven even among major brands,
some brands are more active than others
Trademark Clearinghouse (TMCH)
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 55 S K G F. C O M
Offensive Registration
• Access to new gTLDs – a TMCH registration allows access to
early registration of new gTLDs during the Sunrise Period,
increases likelihood of obtaining desired domains
Defensive Registration
• Ease of enforcement; access to dispute mechanisms
• Blocking registrations relating to certain domains (.sex, .porn.,
.adult, .sucks)
TMCH Registration Strategies
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 56 S K G F. C O M
Brand Considerations
• Rank brands in order of importance to the client and the brand
• Likely brand targets for registration with new gTLDs, which
brands will benefit from new marketplaces, exposure
• Register house marks, company name(s), core brands
• Products/services sold online
• Social media brands
• Mobile application brands
• Brands with enforcement/counterfeiting issues
TMCH Registration Strategies
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 57 S K G F. C O M
gTLD Considerations
• Consider new gTLDs that encompass relevant sectors relating to the
client's business or brand, and consider obtaining TMCH registrations for
brands that may fit into these sectors
• Consider likelihood of actually attaining the target gTLDs (i.e., are they
generic or descriptive, owned by more than one party, etc.), benefits from
access to Sunrise Periods
• Consider bulk/package deals offered by registries – will TMCH registration
enable access
TMCH Registration Strategies
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 58 S K G F. C O M
• Start as soon as possible; already a year into the launch
process
• Low cost of entry, low risk from opting to participate
• Don't discount value and impact of new gTLDs
Final Thoughts
© 2014 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 59 S K G F. C O M
For More Information
Monica Riva Talley, Esq.
Trademark, Advertising, and
Anti-Counterfeiting Practice Leader
Sterne, Kessler, Goldstein & Fox
202.772.8688
Top Related