Pattishall IP Blog

October 26, 2011

Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names – Deadline for Sunrise Period for Blocking Registrations is October 28, 2011

Filed under: Internet, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:56 am

Categories: Trademark (General), Internet
Tags: Domain Names, Internet, ICANN, Belinda J. Scrimenti, Jasmine R. Davis

By Belinda J. Scrimenti and Jasmine Davis, Trademark Attorneys

[***Update - . XXX Domain Registry Has Received Over 42,000 Registrations – Deadline
for Sunrise Period for Blocking Registrations is October 28, 2011

ICM Registry, the registry handling .XXX top-level domain (“TLD”) registrations reported this week that it has received over 42,000 applications for .XXX domain names since the September 7, 2011 launch of the Sunrise Period “with thousands more pouring in each day.”  “We are very pleased, but not surprised, by this overwhelming response to the availability of .XXX domains,” said Stuart Lawley, CEO of ICM Registry.  The .XXX domain is intended solely for use by the “adult entertainment” industry.

ICM reported that the number of applications already received is over five times what ICM had anticipated.  ICM also reported that the applications have been “well balanced” between brand owners inside the adult industry and those non-adult brands that want to protect their trademarks.

Trademark owners outside the adult entertainment industry with registered trademarks have only until October 28, 2011 to take advantage of the sunrise period to file for a blocking registration that will prevent use of their trademarks in connection with pornographic uses.  If a trademark owner does not have a registered mark, or misses the deadline, it must wait until December 6, 2011 to file registrations to block others from using their marks in the .XXX domain.  See our August 18, 2011 blog post, below for details on the process.***] (more…)

August 18, 2011

Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names – Sunrise Registration Period for Trademark Owners Begins September 7, 2011

Filed under: Internet, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:15 pm

Categories: Trademark (General), Internet
Tags: Domain Names, Internet, ICANN, Belinda J. Scrimenti, Jasmine R. Davis

By Belinda J. Scrimenti and Jasmine Davis, Trademark Attorneys

Protecting your brand and trademarks from infringement and tarnishment by uses on pornographic and other unsavory websites just got more difficult.  As we reported in April, the Internet Corporation for Assigned Names and Numbers (ICANN) board approved the .XXX sponsored top-level domain (“sTLD”) name in March.  http://bit.ly/q0Cikk  The .XXX domain is intended solely for use by the “adult entertainment” industry, and officially launches on December 6, 2011.  The goal of the domain was to identify the websites as containing sexually explicit content – thus readily allowing adults to discover or avoid such sites, and to control access by children.

The new .XXX domain, however, only leads to greater enforcement problems.  As the existence of the new domain is likely to increase the volume of sites associated with adult content, brand owners must now be concerned that others could use their trademarks to attract audiences to unrelated pornographic sites.  Therefore, to protect the vast majority of brand owners which are not in the adult entertainment industry, but which face the risk of use of their marks in new .XXX domains, ICANN has developed rules allowing such trademark holders to “block” registered marks from the .XXX domain. (more…)

April 21, 2011

.xxx Domain Names Going Live Soon, Brand Owners Prepare to Protect Their Trademarks in a New Online Space

Filed under: Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:21 pm

Categories: Internet
Tags: Domain Names, ICANN, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

For anyone who has ever wanted his or her pornography to reside in one place on the Internet, ICANN has finally accommodated you.  After numerous false starts, the ICANN board approved the .xxx top-level domain (“tld”) name on March 18, 2011, and the tld went live on April 15, 2011.  For a work-safe preview (for now, if you’re reading this after the posting date, click at your own risk), go to http://sex.xxx/.

ICM Registry LLC (“ICM”) will operate the .xxx tld.  Registrations will “wholesale around $60 per domain” with individual registrars setting their own registrant pricing.  See http://www.icmregistry.com/about/faq.php.  Registrations will be limited to entities that “provide online, sexually-oriented adult entertainment intended for consenting adults or for other community members,” representatives of such entities, or entities that provide products or services to such entities.  ICM claims to have received requests reserving about 600,000 domain names already.

Trademark owners, including those that do not fall within the online, sexually-oriented adult entertainment community noted above, will have a chance to register relevant domain names defensively during a Sunrise period.  See http://www.icmregistry.com/about/sunrise.php.  ICM has not detailed the process for this Sunrise period, but here is what we know so far:

Rights owners from outside the sponsored community [will be able to] reserve and therefore block names at the .xxx registry so that they cannot be used as conventional web addresses. ICM will work in close partnership with specialist consultancy, Valideus on the execution of the .xxx rights protection program.

A onetime fee will apply which will cover the submission and processing of the relevant right . . . [and] the standard registry fee will apply for the period or periods of registration applied for.

ICM has requested “early feedback from members of the intellectual property community” to help it organize the Sunrise process.

*          *          *

Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He also teaches trademark litigation at John Marshall Law School.

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November 23, 2010

A National Arbitration Forum Panel Ruled Against the New York Times in its Attempt to Recover dealbook.com From a Domainer, Suggesting That Laches Could Be a Defense to an Action Under the UDRP

Filed under: Internet, UDRP — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:59 pm

Categories:  Internet, Trademark (General)
Tags:  UDRP, Domain-Names, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

The New York Times (“NYT”) operates the very well-known Dealbook reporting service.[1] It wanted the domain name to go along with it.  Finding that <dealbook.com> was owned by domainer[2] Name Administration, Inc. (“NAI”), it filed an action under the UDRP to recover the domain name, arguing that NYT had prior rights in DEALBOOK as a trademark registered in the U.S. and that NAI registered the domain name in bad faith.  Somewhat surprisingly, the NYT lost.  See http://domains.adrforum.com/domains/decisions/1349045.htm. But why?  According to the panel, the NYT failed to submit sufficient evidence to establish its priority in DEALBOOK, but it also could have lost under the doctrine of laches.

NAI registered <dealbook.com> in March 2004.  NYT’s U.S. trademark registrations for DEALBOOK established priority only as early as April 25, 2006.  NYT asserted that it coined the term and used it since October 8, 2001.  To support its priority, NYT also submitted evidence of a $120,000 advertising campaign at the launch of its DEALBOOK service in 2001-2002, as well as other evidence of use prior to 2004. (more…)

November 5, 2010

Use of a Domain Name, Originally Registered with a Trademark Owner’s Permission, to Extract Payment from the Trademark Owner Violates the Anticybersquatting Consumer Protection Act

Filed under: Cybersquatting, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:46 pm

by Phillip Barengolts, Trademark Attorney

Domain names have become increasingly important to business.  Consumers expect to find a brand at the eponymous domain name.  When that expectation is thwarted, a consumer may shop somewhere else – much to the harm of the business.

Fortunately for brand owners, Congress passed the Anticybersquatting Consumer Protection Act (ACPA), which establishes liability where: 1) a defendant “has a bad faith intent to profit” from the use of a protected trademark; and 2) the defendant registers, traffics in, or uses a domain name that is identical or confusingly similar to the protected mark.[1] The Ninth Circuit found in DSPT Int’l, Inc. v. Nahum, No. 08-55062 (9th Cir. Oct. 27, 2010),[2] that a bad faith intent to profit from a domain name may arise at any time a defendant owns the registration for a domain name – not only at the time of registration. (more…)

July 20, 2010

New .co Domain Names Now Available

Filed under: Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:56 pm

By Alexis Payne, Esq.

Beginning July 20, 2010, the registry operator of the .co top-level domain, .CO Internet S.A.S., is making .co domains available to the general public through registers such as GoDaddy.com, Network Solutions, and Register.com.  The move opens the .co top-level domain, which was once the country code top-level domain (“ccTLD”) for Colombia, to the general public.

Research carried out on behalf of .CO Internet S.A.S revealed that 75 percent of web users said they associated .co with “company,” “corporation,” or other commercial endeavors.  More than twenty countries, including the United Kingdom (.co.uk) and Japan (.co.jp), already use .co domains for their ccTLD’s.  Further, nearly 70 percent of the brands listed in the Brand Finance Top 500 have already been pre-registered as .co domain names, including Amazon, American Express, Apple, BMW, Cartier, Canon, CNN, Coca-Cola, Disney, eBay, Exxon, Ford, Google, Hilton, Honda, IBM, IKEA, Kodak, McDonalds, Microsoft, MTV, Nestle, Nike, Nokia, Panasonic, Pfizer, Samsung, Sony, Toshiba, Toyota, Unilever, Visa, Yahoo, and others. (more…)

June 16, 2010

Google’s Alleged Licensing of Domain Names as Part of its AdSense Program may Subject it to Liability under the Anticybersquatting Consumer Protection Act

Filed under: Cybersquatting, Internet, Pattishall — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:29 pm

by Phillip Barengolts, Trademark Attorney

In a case that tests the limits of contributory liability under the Anticybersquatting Consumer Protection Act (ACPA), Judge Blanche Manning of the Northern District of Illinois denied defendant Google’s motion for summary judgment on the plaintiffs’ cybersquatting claim that Google should be held liable for servicing the parking pages of registrants’ allegedly cybersquatting domain names.[1] Vulcan Golf, LLC v. Google, Inc., No. 1:07‑cv-03371, slip op. (N.D. Ill. June 9, 2010) (Memorandum and Order).  Specifically, the court held that, where Google’s agreement with a third party contains a license permitting Google to use a parked domain name for purposes of placing Google’s advertising (sponsored links) on the web site displayed when an Internet user enters the domain name, Google may be held liable under plain language the ACPA as an “authorized licensee” of the registrant if the underlying domain name violates the ACPA.  Vulcan Golf, slip op. at 8.  See 15 U.S.C. § 1125(d)(1)(D). (more…)

December 14, 2009

MasterCard Prevails In Domain Name Dispute

Filed under: Internet — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 8:10 pm

Judge Stephan P. Mickle of the United States District Court for the Northern District of Florida issued an order in the case of MasterCard International Incorporated v. Michael J. Yanda, d/b/a Indy Web Productions and Finance Globe Portal, Case No. 4:08-cv-00565 (N.D. Fla. Nov. 5, 2009).  Judge Mickle’s order confirms that the registration of multiple Internet domain names containing trademarks owned by another party, or domain name “warehousing”, is a violation of the Anti-cybersquatting Consumer Protection Act (“ACPA”) and constitutes trademark infringement, unfair competition and dilution. (more…)

October 9, 2009

ICANN Outlines Proposed Trademark Protection Measures in Preparation for the Introduction of New gTLDs in Early 2010

Filed under: International, Internet — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:15 pm

By Mark V.B. Partridge, Trademark Attorney

The Internet Corporation for Assigned Names and Numbers (ICANN) is introducing new generic top-level domains (gTLDs) in early 2010.  This past weekend ICANN issued its third Draft Applicant Guidebook, which addresses some of the trademark issues that have been raised.

Implementation Recommendations

While specific trademark protection mechanisms are still to be decided, ICANN has drafted a set of implementation recommendations to protect intellectual property in the new gTLD space based upon recommendations from the Implementation Recommendation Team and others.  ICANN also considered the comments of the broader Internet community. (more…)

June 17, 2009

.yournamehere: ICANN’s Expansion of the Domain Name Space

Filed under: Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:27 pm

By Sanjiv Sarwate and Daniel Hwang, Trademark Attorneys

ICANN plans to significantly expand the domain name universe by allowing virtually any character string to serve as a top-level domain name. In this article, Sanjiv Sarwate and Daniel Hwang summarize how the new process will work and the steps being taken to address the protection of brand rights…

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