April 16, 2008

Domain names have become big business, and trademark owners face more challenges than ever in avoiding "cybersquatting" and other brand damaging practices. Carr & Ferrell Partner, Jefferson Scher, led this two-hour discussion on current developments in the business and law of domain names and trademarks.

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Presenter's Blog

The following is an outline of the roundtable discussion:

1. Registration and Ownership Issues
   
   1. What domain names should be registered?
      
      1. Should all of the primary gTLDs be registered (.com, .net, .org, .biz, .info)?
      2. Should any misspelled or “gripe” domains be registered (e.g., widgetz.com, widgetssuck.com)?
      3. What ccTLDs should be registered, if any, and if so, what about domain names in the local language or characters?
      4. BONUS Q: How best to get ahead of public awareness of new names and marks?
   2. Who does the filing?
      
      1. Is outside counsel needed for basic registration? For registering new extensions like .mobi?
      2. What is the most efficient way to monitor domain names cropping up on new extensions?
      3. Is it helpful to have foreign associates notify us about similar domain name registrations in foreign countries?
   3. What if a registration lapses?
      
      1. Does the registrar bear responsibility if it fails to notify about a renewal deadline? What about if an automatic renewal system fails?
      2. If there is an apparent inadvertent failure to renew, is it “bad faith” if someone else attempts to register?
      3. BONUS Q: Who should take responsibility for renewals: client IT, client legal, outside counsel, outside service? Who should monitor “the renewer”? Are any outside services economical for modest-sized portfolios?
   4. How do we calculate a domain name’s value for sale or acquisition?
   5. How should one respond to unsolicited offers received by clients from unknown entities, offering to avoid registrations of marks and trade names as domain names?
   6. BONUS TOPIC: Other acquisition issues
      
      1. Negotiations: how to contact a seller, particularly if seller is a “domainer”? set up a possible fallback bad faith argument?
      2. Payment/transfer issues: who pays the cost of escrow services? what if the registrar drops the ball and both parties end up with no domain?
      3. Trademark issues: acquire common law rights and goodwill? bar future similar domain registrations?
2. Chasing Cybersquatters: Arbitration Proceedings
   
   1. Where To Begin?
      
      1. What is the best source for researching UDRP decisions? NAF, WIPO, other?
      2. What is the best method for tracking down the registrant? How accurate is Whois, and what is the next step if a Whois search does not reveal the registrant? Should subpoenas be served on the registrar?
      3. ICANN efforts to restrict public access to Whois. How will this affect our ability to protect clients’ marks? Are there alternatives to Whois?
      4. Reverse WHOIS: Helpful information to find domain name warehousers but how do you get it?
      5. Demand Letters: Do they work? Do they alert the registrant to transfer the name? If they don’t resolve the conflict, do they provide evidence of the registrant’s bad faith?
   2. Where To File? WIPO, NAF, or other?
      
      1. NAF is less expensive; is the quality of the arbitrators any different?
      2. Panel of one or three?
      3. NAF allows an automatic reply brief; replies are discretionary with WIPO. Has this had a big impact on practice before WIPO?
      4. Is WIPO more efficient for European clients?
3. Chasing Cybersquatters: Lawsuits
   
   1. Anticybersquatting Consumer Protection Act (ACPA)
      
      1. Overview of recent decisions and experiences.
      2. Cost/benefit analysis of the rewards and remedies in ACPA suits. Do the statutory damages provide sufficient deterrent?
   2. Digital Millennium Copyright Act (DMCA)
      
      1. Using the DMCA notice/demand to deactivate websites during (or in lieu of) UDRP and ACPA proceedings if the name is used to access a site containing a corporate logo or other copyrighted works.
4. BONUS TOPICS: Related Issues
   
   1. Keyword-driven Search Engine Advertising (e.g., Google AdWords)
      
      1. Cost-effective approaches for trademark owners?
   2. Fraud including Phishing
      
      1. How to balance protection of customers and law enforcement’s need to investigate?