Digital Fight or Flight:
Enforcing Your Rights
(and Exercising Restraint)
Against the Internet’s Squatters,
Haters & Infringers
September 15, 2016
Presented by: Will Dickinson, Williams Mullen
Troy Cahill, General Counsel, LaserShip, Inc.
Presenting Today
Will Dickinson
Williams Mullen
22
Troy D.
Cahill
LaserShip,
Inc.
Encounters on the Web
> Your company’s name or product is being used in a
domain (e.g., “smallfirm.net”) for a website with links
to your competitors.
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Encounters on the Web
> Third parties are selling “hand-made” goods via
various websites using your company’s logo.
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Encounters on the Web
> A disgruntled customer creates a
“smallfirmsucks.com” site criticizing your company.
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Encounters on the Web
> A competitor launches a keyword advertising
campaign using your company’s product name in the
ad.
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Encounters on the Web
> A third party uses a similar name (e.g., SMALL FERM)
to sell competitive products or services on the
Internet.
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Response Options
(Depending Upon Circumstances)
> Cease & Desist Letter to Infringer
> Cease & Desist Letter to Third-Party Website Host
> Trademark Infringement Complaint
> ACPA (Federal Court) Complaint
> UDRP (Arbitration)Cybersquatting Complaint
> Search Engine Optimization
> Google, Amazon, Ebay, Facebook, etc. Complaint
Process
> No Action / Monitor
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Trademark Infringement
Good Will Defined
Good will is the legal and economic
recognition of buying habits — and
trademarks are the symbols by which good
will is advertised and buying habits
established.
1 McCarthy on Trademarks and Unfair Competition § 2:18 (4th
ed.)
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Trademark Infringement
TM
What is a mark? ®
> Trademark: Any word, name, symbol, or device, or
any combination, used, or intended to be used, in
commerce to identify and distinguish the goods of
one manufacturer or seller from goods manufactured
or sold by others, and to indicate the source of the
goods.
> Service mark: same as above for services
> E.g., WILLIAMS MULLEN, FINDING YES, and
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Trademark Infringement
Common Law Rights
®
TM
> Federal registration is
not required to establish
rights in a trademark.
> Common law rights arise
from actual use of a
mark.
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Trademark Infringement
Test for Infringement
> Test: Whether there is a likelihood of consumer
confusion as to source, sponsorship or affiliation.
> Factors different in each circuit, but in the Fourth
Circuit, Pizzeria Uno Corp. v. Temple, 747 F.2d 1522,
1527 (4th Cir. 1984):
•
•
•
•
a) the strength or distinctiveness of the mark;
b) the similarity of the two marks;
c) the similarity of the goods/services the marks identify;
d) the similarity of the facilities the two parties use in their
businesses;
• e) the similarity of the advertising used by the two parties;
• f) the defendant's intent;
• g) actual confusion (not necessary, but helpful)
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Domain Name Enforcement
Domain Names Defined
> What is it?
– The Domain Name System (“DNS”) is a system that translates IP
addresses, which have unique numeric designations to identify
individual computers, into easier-to-remember readable characters.
– For example, if the website for Williams Mullen is hosted on a server
with an IP address of 193.1.42.87, DNS translates and displays the
address as www.williamsmullen.com.
> What is a TLD?
– TLD stands for “Top-Level Domain,” which is the right-most set of letters
in a domain name after a period and before special characters (such as
/).
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Domain Name Enforcement
Domain Names Defined
> Subdomains:
– the domain names to the left of the TLD period (i.e., _____.com)
– For example, in the domain www.williamsmullen.com, both
“williamsmullen” and “www” are subdomains.
– “williamsmullen” is a domain name Williams Mullen purchased to
direct traffic to its website.
– Subdomains are a way to create a separate web presence and
website within a given domain.
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Domain Name Enforcement
Issue: name/mark Used in Domain
> Examples:
–
–
–
–
–
–
Harrodsbank.org
Drinkcoke.org
Ve3rizon.com;
Peta.org (standing for “People Who Eat Animals”);
Walqaeda.com
Lucentsucks.com;
> Recourse:
– Anticybersquatting Consumer Protection Act (“ACPA”), 15
U.S.C. § 1125(d)
– Uniform Domain Name Resolution Policy (“UDRP”)
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Domain Name Enforcement
Classic Cybersquatting – Pay-per-Click
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Domain Name Enforcement
Anticybersquatting Consumer Protection Act (“ACPA”)
> Lanham Act 15 U.S.C. § 1125(d)
> Elements of a case: domain registrant
(i) has a bad faith intent to profit from that mark, including a
personal name which is protected as a mark under this section;
and
(ii) registers, traffics in, or uses a domain name that-– (I) in the case of a mark that is distinctive at the time of registration of
the domain name, is identical or confusingly similar to that mark;
– (II) in the case of a famous mark that is famous at the time of
registration of the domain name, is identical or confusingly similar to
or dilutive of that mark
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Domain Name Enforcement
ACPA - “Bad Faith Intent” Elements
> Summary of Factors:
–
–
–
–
–
–
trademark rights in the domain name;
name commonly used to identify person or business;
prior use with bona fide offering of goods or services;
bona fide noncommercial or fair use;
intent to divert consumers from the mark owner's website to domain;
offer to transfer, sell, or otherwise assign domain name to mark owner or any third
party for financial gain without having used, or having an intent to use, the domain
name in bona fide offering of any goods or services, or person's prior conduct
indicating pattern of such conduct;
– use of false, misleading, or incomplete domain registration contact information or a
patter of such conduct;
– pattern of cybersquatting; and
– extent to which mark is or is not distinctive and famous.
> No bad faith where person believed and had reasonable
grounds to believe that the use of the domain name was fair
use or otherwise lawful.
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Domain Name Enforcement
ACPA – Example Case
> Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d
214 (4th Cir. 2002)
–
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HARRODS LIMITED, Plaintiff-Appellant, v. SIXTY INTERNET DOMAIN NAMES;
HARRODSARGENTINA.COM; HARRODSARGENTINA.NET; HARRODSARGENTINA.ORG;
HARRODSBUENOSAIRES.COM; HARRODSBUENOSAIRES.NET; HARRODSBUENOSAIRES.ORG,
Defendants-Appellees. HARRODS LIMITED, Plaintiff-Appellee, v. FIFTY-FOUR INTERNET NAMES;
HARRODSSUDAMERICA.COM; HARRODSSUDAMERICA.NET; HARRODSSUDAMERICA.ORG;
HARRODSSOUTHAMERICA.COM; HARRODSOUTHAMERICA.NET;
HARRODSSOUTHAMERICA.ORG; HARRODSBRASIL.COM; HARRODSBRASIL.NET;
HARRODSBRASIL.ORG; HARRODSBRAZIL.COM; HARRODSBRAZIL.NET; HARRODSBRAZIL.ORG;
CIBERHARRODS.COM; CIBERHARRODS.NET; CIBERHARRODS.ORG; CYBERHARRODS.COM;
CYBERHARRODS.NET; CYBERHARRODS.ORG; HARRODSBANK.COM; HARRODSBANK.NET;
HARRODSBANK.ORG; HARRODSBANKING.COM; HARRODSBANKING.NET;
HARRODSBANKING.ORG; HARRODSFINANCIAL.COM; HARRODSFINANCIAL.NET;
HARRODSFINANCIAL.ORG; HARRODSSERVICES.COM; HARRODSSERVICES.NET;
HARRODSSERVICES.ORG; HARRODSVIRTUAL.COM; HARRODSVIRTUAL.NET;
HARRODSVIRTUAL.ORG; HARRODSSTORE.COM; HARRODSSTORE.NET; HARRODSSTORE.ORG;
TIENDAHARRODS.COM; TIENDAHARRODS.NET; TIENDAHARRODS.ORG;
HARRODSAMERICA.COM; HARRODSAMERICA.NET; HARRODSAMERICA.ORG;
SHOPPINGHARRODS.COM; SHOPPINGHARRODS.NET; SHOPPINGHARRODS.ORG;
HARRODSSHOPPING.COM; HARRODSSHOPPING.NET; HARRODSSHOPPING.ORG;
HARRODSBASHOPPING.COM; HARRODSBASHOPPING.NET; HARRODSBASHOPPING.ORG;
HARRODSSHOPPINGBA.COM; HARRODSSHOPPINGBA.NET; HARRODSSHOPPINGBA.ORG,
Domain Name Enforcement
ICANN Policies – UDRP
> ICANN: Internet Corporation for Assigned Names and
Numbers
– not-for-profit public-benefit corporation
– international organization responsible for the management and oversight of the
coordination of the Internet’s domain name system.
> UDRP: Uniform Domain-Name Dispute-Resolution Policy
– Rules and procedures for domain-name trademark disputes
– All registrars required to follow UDRP
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Domain Name Enforcement
UDRP – Uniform Domain-Name Dispute-Resolution Policy
> Which forum?
– NAF: National Arbitration Forum
– WIPO: World Intellectual Property Organization
> Elements of a claim:
– (i) the domain name is identical or confusingly similar to a
trademark or service mark in which the complainant has rights;
and
– (ii) the registrant has no rights or legitimate interests in
respect of the domain name; and
– (iii) the domain name has been registered and is being used in
bad faith.
> Consider similar factors for ACPA and UDRP claims.
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Domain Name Enforcement
Issues with Gripe Sites
> “smallfirmsucks.com”-Type Gripe Sites
– Companies often deal with gripe/hate sites that criticize the
business and post potentially reputation-damaging information
on the web.
– If legitimate and noncommercial, there is little that a company
can do to remove these sites from the web.
– Trademark law is therefore ill-suited to challenge, due to 1st
Amendment protections. Radiance Foundation, Inc. v.
N.A.A.C.P., 786 F.3d 316, 323–326, 114 U.S.P.Q.2d 1772 (4th
Cir. 2015) (“Courts have uniformly understood that imposing
liability under the Lanham Act for such speech is rife with the
First Amendment problems.”).
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Domain Name Enforcement
Other Issues
> Generic or Descriptive Marks
> New Marks
> Prior Use
> Inactive Sites
> Parody
> Fan Sites
> Informational Sites
> Legitimate Sales or Advertising
> Trademark Infringement Does Not Equal
Cybersquatting
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Search Engine Optimization
> Search Engine Optimization (“SEO”) is a method used by
website publishers and related firms to increase a
website’s visibility and search rank for Internet users.
> “Black Hat” vs. “White Hat” SEO techniques
– “Black Hat” SEO is discouraged by search engine companies and can be illegal.
• These techniques attempt to game the system to achieve a higher search
ranking without providing helpful user content.
• Creating links from other websites without meaningful content.
• “Keyword Stuffing”
• “Cloaking”
• Copying content from other websites.
– “Black Hat” techniques can result in search-result penalties from the search
engines.
– “White Hat” SEO techniques are encouraged by search engines.
• Providing users with targeted, quality website content.
See Generally Raymundo Reyes, The Legal Obligations of Search Engine Optimization Firms, 57 Ariz. L. Rev.
1115, 1118-1123 (2015)
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Keyword Advertising
> Although the issue is not completely settled, courts generally
separate cases where third-party’s trademark is simply used as
a keyword in the background of the search engine algorithm or,
in contrast, is used within the resulting sponsored ad.
– Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1153
(9th Cir. 2011) (stating that “[i]n the keyword advertising context, the likelihood of
confusion will ultimately turn on what the consumer saw on the screen and
reasonably believed, given the context”)
– 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1242-43 (10th Cir. 2013)
(endorsing the district court's determination that “because Google users view
only the results of their searches and cannot tell exactly which keywords an
advertiser has purchased,” the use of a competitor's trademark as a keyword
does not, by itself, amount to trademark infringement).
> Search engine firms usually have a complaint process through
which a trademark owner can protest a third-party’s use of its
trademark in violation of the law or the search engine firm’s
terms of use.
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The Whack-a-Mole Problem
> Non-Enforcement Can Weaken a Company’s
Trademarks
> Trying to hunt down and remove all infringing items
can be a never-ending and resource-intensive task.
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Third-Party Website Complaint Processes
> Many websites that host third-party content, such as
Facebook, Google, Etsy, Ebay, etc., have internal
complaint processes that can be as effective as
litigation.
> However, each website has different policies, and
their level of sophistication with trademark law varies
dramatically.
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Appropriate Enforcement Levels
> “The question is not how often or how assertively the trademark
owner has enforced its mark, but what has been the marketplace
loss of strength, if any, resulting from a failure to enforce.
> The real question is public perception of plaintiff's mark, not a
battle count of how often it has threatened to sue or in fact sued.”
2 McCarthy on Trademarks and Unfair Competition § 11:91 (4th
ed.)
> Public perception of a brand can be negatively impacted by overeager enforcement as well.
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Five Steps to Take After an Encounter
> Step 1: Determine whether/to what extent target website could affect
one of your core brands or business lines.
> Step 2: Determine strength of trademark/domain name infringement
case and whether target website could have legitimate basis for
operating as-is.
> Step 3: Assuming Steps 1 & 2 result in a priority and strength-of-case
level requiring enforcement action, determine whether non-litigation
enforcement option is viable.
> Step 4: Unless infringement is a high-risk infringement requiring
immediate litigation, establish enforcement options to maximize budget
and gradually increase aggressiveness.
> Step 5: If litigation is required, determine budget, analyze personal
jurisdiction/venue issues, and strategy for early ADR, if feasible.
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Strategies for Protecting Your Portfolio on a
Budget
(1) Encourage Non-Descriptive Marks
(2) Pre-Clearance Searches
(3) Apply for Federal Trademark Registration (and Int’l)
(4) Focus on Core Brands
(5) Implement Domain-Name Purchasing Plan
(6) Implement Careful, Regular Enforcement Review of Repeat Offenders
(7) Before Sending Cease & Desist, Ask Whether You Are Willing to See
the Case Through to the End.
(8) Eliminate Worst UDRP Offenders Likely to Confuse Customers
(9) Implement “White Hat” Search Engine Optimization Strategy
(10) Establish Plan for Responding to Bad Reviews and “Gripe Sites”
(11) Avoid Knee-Jerk Attempts to Remove Legitimate Bad Reviews (Gripe
Sites)
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THANK YOU & QUESTIONS
Will Dickinson
Williams Mullen
T: 804.420.6607
E:
[email protected]
m
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Troy D. Cahill
LaserShip, Inc.
T: 703.761.9030 ext. 8188
E: [email protected]
Appendix – Citations / Law
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Anticybersquatting Consumer Protection Act
(“ACPA”)
> Lanham Act 15 U.S.C. § 1125(d)
> Elements of a case: domain registrant
– (i) has a bad faith intent to profit from that mark, including a
personal name which is protected as a mark under this section;
and
– (ii) registers, traffics in, or uses a domain name that-• (I) in the case of a mark that is distinctive at the time of
registration of the domain name, is identical or confusingly
similar to that mark;
• (II) in the case of a famous mark that is famous at the time of
registration of the domain name, is identical or confusingly
similar to or dilutive of that mark; or
• (III) is a trademark, word, or name protected by reason of section
706 of title 18, United States Code, or section 220506 of title 36,
United States Code. (Red Cross or Olympic Symbols)
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ACPA - “Bad Faith Intent”
> Summary of Factors:
–
–
–
–
–
–
trademark rights in the domain name;
name commonly used to identify person or business;
prior use with bona fide offering of goods or services;
bona fide noncommercial or fair use;
intent to divert consumers from the mark owner's website to domain;
offer to transfer, sell, or otherwise assign domain name to mark owner or any third
party for financial gain without having used, or having an intent to use, the domain
name in bona fide offering of any goods or services, or person's prior conduct
indicating pattern of such conduct;
– use of false, misleading, or incomplete domain registration contact information or a
patter of such conduct;
– pattern of cybersquatting; and
– extent to which mark is or is not distinctive and famous.
> No bad faith where person believed and had reasonable
grounds to believe that the use of the domain name was fair
use or otherwise lawful.
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In Personam v. In Rem
> ACPA provides for in rem actions against domain names if:
– (1) the domain name registrant is not subject to personal jurisdiction in the U.S. or
– (2) the domain name registrant cannot be located after claimant’s due diligence
attempting to contact the registrant.
– intended to apply to registrants whose contact with the U.S. is only through their
domain registrar, such as Network Solutions or GoDaddy
> In rem actions not limited to bad faith domain name registration, but also
certain infringement and dilution claims. See Harrods Ltd. v. Sixty
Internet Domain Names, 302 F.3d 214 (4th Cir. 2002)
> Porsche Cars North America, Inc. v. Porsche.Net, 302 F.3d 248 (4th Cir.
2002) (affirming constitutionality of treating domain name addresses as
property under the ACPA for purposes of in rem action)
> Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D.
Va. 2000) (“[There] is no prohibition on a legislative body making
something property. Even if a domain name is no more than data,
Congress can make data property and assign its place of registration as
its situs.”)
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Notable Cases under ACPA (cont.)
> Drinkcoke.org
– Coca-Cola Co. v. Purdy, 321 F.3d 774 (8th Cir. 2004), (affirming
preliminary injunction under the ACPA against owner of the
domains mywashingtonpost.com, drinkcoke.org,
mymcdonalds.com, mypepsi.org, among others, and rejecting
the defendant’s First Amendment and lack of bad faith defenses)
– “While Purdy has the right to express his message over the
Internet, he has not shown that the First Amendment protects his
appropriation of plaintiffs' marks in order to spread his protest
message by confusing Internet users into thinking that they are
entering one of the plaintiffs' websites.”
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Notable Cases under ACPA (cont.)
> Ve3rizon.com
– Verizon Ca. Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088 (C.D.
Cal. 2008) (“It is clear that their intent was to profit from the poor typing abilities
of consumers trying to reach Plaintiff’s sites: what other value could there be in a
name like ve3rizon.com?”)
> Justdoit.net
– Nike Inc. v. Variety Wholesalers, Inc., 274 F. Supp. 2d 1352 (S.D. Ga. 2003),
aff’d, 107 Fed. Appx. 183 (11th Cir. 2004) (bad faith where defendant sought to
capitalize on plaintiff’s goodwill in its JUST DO IT mark by diverting users to
defendant’s primary web site by using “justdoit.net” domain name.)
> Peta.org
– People for Ethical Treatment of Animals, Inc. v. Doughney, 113 F. Supp. 2d 915
(E.D. Va. 2000), aff’d, 263 F.3d 359 (4th Cir. 2001). The court suggested that
using the domain name Peta.org standing for “People who Eat Animals,” violated
ACPA by having bad faith intent to profit from use of the name that was identical
or confusingly similar to trademark of animal rights organization.
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Notable Cases under ACPA (cont.)
> Lucentsucks.com
– Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 529,
535 (E.D. Va. 2000) (“A successful showing that lucentsucks.com is
effective parody and/ or a cite for critical commentary would seriously
undermine the requisite elements for the causes of action at issue in this
case.”)
– The court acknowledged defendant's argument in ACPA claim that
likelihood of confusion was minimal where plaintiff's business involved
telecommunications equipment and defendant's challenged website
involved pornography and acknowledging that effective parody diminishes
any risk of consumer confusion.
– “The fact that a person may use a mark in a site in such a lawful manner
may be an appropriate indication that the person's registration or use of
the domain name lacked the required element of bad-faith.”
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Rights to the Name in the Domain Name
> 4a(i): the domain name is identical or confusingly
similar to a trademark or service mark in which the
complainant has rights;
– Trademark/common law rights
– Personal names
– Misspellings
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Issues with 1st UDRP Element
> Issues related to proving complainant’s rights in the
domain name
–
–
–
–
–
–
–
–
Registered trademarks versus common law rights
The test for identity or confusing similarity
Issues with the “sucks cases"
Trademark rights acquired after domain registered
Rights in geographic terms
Rights in personal names
Licensee’s rights under the UDRP
Additional generic, descriptive, or geographic material in a
domain
– Common or obvious misspellings of the trademark in the domain
– Disclaimed or design element considerations in assessing
confusing similarity
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Domain Name Holder’s Rights to the Name
> 4(a)(ii) – the registrant has no rights or legitimate
interests in respect of the domain name
> 4(c)– what registrant can show to avoid liability:
– Bona fide use
– Noncommercial use
– “Commonly known by”
– Mark/business name rights
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Issues with 2nd UDRP Element
> Issues related to proving that the respondent lacks
rights or legitimate interests in the domain name
– Burden of proof that domain owner lacks rights or legitimate
interests
– Rights and legitimate interests in dictionary words?
– Reseller/distributers
– Criticism sites
– Fan sites
– Parking and landing pages or pay-per-click (PPC) links
– Domain owner’s own trademark
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Bad Faith Registration and Use
> 4(a)(iii) – the domain name has been registered and is
being used in bad faith.
> Examples of bad faith under 4(b):
–
–
–
–
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Offer to sell or rent
Pattern of conduct
Disrupt competitor
Attract Internet users
Domain Parking
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Issues with 3rd UDRP Element
> Issues relating to the bad faith element
– Domain name registration before trademark rights acquired
– Domain name is not actively used and the domain name holder has
taken no active steps to sell the domain name or to contact the
trademark holder (passive holding)
– Pattern of conduct
– Constructive notice, or a finding that a respondent "knew or should have
known" about a trademark
– Disclaimer on the web page of a disputed domain name
– Relevance of statements made during settlement discussions
– Registration renewal
– Third-party or "automatically generated" material
– Privacy or proxy registration service
– Use of "robots.txt" or other mechanisms to prevent auto-archiving
– Tarnishment of a trademark
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Example Cases under UDRP
> Generic Marks
– Retail Servs. v. Freebies Publ'g, 364 F.3d 535 (4th Cir. 2004) (overturning
arbitration finding that freebies.com website violated the UDRP by infringing
registered trademark FREEBIES and holding that FREEBIES was a generic,
unprotectable mark).
> Typosquatting
– Dow Jones & Co. v. Zuccarini, WIPO D2000-0578 (Aug. 28, 2000) (finding
UDRP violation for confusingly similar misspellings wallstreetjounal.com and
wallstreetjournel.com of WALL STREET JOURNAL to divert traffic to advertising
sites).
> Fan Sites
– 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO D2004-0001 (March 26,
2004) (Finding domain owner’s legitimate interest in the domain patbenatar.com
and stating “Respondent's website provides a wide range of information
concerning Pat Benatar, the recording artist. There are clear disclaimers on the
website stating that it is not endorsed by or an official website of the recording
artist. There is no evidence on the record of this proceeding that Respondent
obtains any commercial benefit from the website.”)
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Example Cases under UDRP (Cont.)
> Fan Sites
– The Jennifer Lopez Foundation v. Tieman, WIPO D2009-0057
(March 24, 2009) (rejecting domain owner’s argument that its
use of jenniferlopez.net and jenniferlopez.org featuring pay-perclick advertising was a “legitimate, noncommercial or fair use”
fan site).
> Inactive Sites
– Ferrari S.p.A. v. Joohee, WIPO D2003-0882 (December 18,
2003) (Transferring inactive domain f1ferrari.com and stating that
“the relevant issue is not whether the Respondent is undertaking
a positive action in bad faith in relation to the domain name, but
instead whether, in all the circumstances of the case, it can be
said that the Respondent is acting in bad faith”).
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Notable Cases under ACPA (cont.)
> Wal-Qaeda.com
– Smith v. Wal-Mart Stores, Inc.,
537 F. Supp. 2d 1302, 1338-39
(N.D. Ga. 2008) (“Evaluating
the overall balance of the seven
likelihood of confusion factors,
the Court finds that Wal-Mart
has failed to demonstrate a
likelihood that its trademarks
‘WALMART,’ ‘WAL-MART,’ and
‘WAL*MART’ and its word mark
‘ALWAYS LOW PRICES.
ALWAYS.’ would be confused
with Smith's ‘WALOCAUST,’
‘WAL-QAEDA,’ ‘FREEDOM
HATER MART,’ or
‘BENTON*VILLEBULLIES
ALWAYS’ concepts.”)
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ICANN Policies
> ICANN: Internet Corporation for Assigned Names and Numbers
– not-for-profit public-benefit corporation
– international organization responsible for the management and oversight of the
coordination of the Internet’s domain name system.
> UDRP: Uniform Domain-Name Dispute-Resolution Policy
– Rules and procedures for domain-name trademark disputes
– All registrars required to follow UDRP
> Country-specific policies
– usDRP: Country specific policy for .us (United States) domains;
– E.g., Netherlands has a separate dispute resolution policy for .NL domains (requiring
just bad faith “use” of domain), and Switzerland has a dispute resolution policy for .CH
domains, (requiring infringement of recognized right under laws of Switzerland)
> Other policies
– RDRP: Restrictions Dispute Resolution Policy is for .biz domains that “is not being or
will not be used primarily for a bona fide business or commercial purpose.”
– CEDRP: Charter Eligibility Dispute Resolution Policy is for .xxx domains that do not
meet the original requirements for registering the domains.
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Appropriate Enforcement Levels
> “The question is not how often or how assertively the trademark owner
has enforced its mark, but what has been the marketplace loss of
strength, if any, resulting from a failure to enforce. The real question is
public perception of plaintiff's mark, not a battle count of how often it has
threatened to sue or in fact sued.” 2 McCarthy on Trademarks and Unfair
Competition § 11:91 (4th ed.)
> Public perception of a brand can be negatively impacted by over-eager
enforcement as well. See Manta, Bearing Down on Trademark Bullies, 22
Fordham Intell. Prop. Media & Ent. L.J. 853, 866 (2012) (“A significant
amount of trademark bullying stems from bullies' impression that to
maintain a mark, it is the owner's duty to aggressively police it. Thus,
many bullying situations involve mark owners who have taken this
perceived duty to extreme levels.”).
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