Domain Names and Trademarks – Legal Issues: PubCon Las Vegas Dec 2007, Day 2

Dec 5, 2007 | 2,561 views | by Navneet Kaushal
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Today's domain name ownership picture is more complicated than ever. Almost every site owner is faced with a domain challenge at some point or another. This session will discuss all of the aspects surrounding domains, from the simple act of registering a domain to the complex legal issues of domain ownership.

Moderator:

  • Joe Laratro

Speakers:

Stephen Sturgeon couldn't make it, otherwise they're all here. Clarke Walton, Founder of Walton Law Firm, and a local, starts off the discussion on Internet law basics and a case study.

3 Main Points:

  • UDRP and ACPA have differing privacy services
  • Register your trademark and keep away from the trademarks of others
  • You can't hide
  • Besides they have no hearings.

Benefits:

  • Works fast (30 to 90 days)
  • Works well internationally
  • Fixed cost ($1500 for filing and $2500-5000 for an attorney)

Downside:

  • You will only retrieve your domain name
  • You receive no damages or fees

ACPA (Anti-cybersquatting Consumer Protect Act)

  • Enacted in 1999
  • Federal court
  • Very formal
  • Court hearings

Benefits:

  • Retrieve domain name
  • Recover damages, upto $1,00,000
  • Recover court & attorney costs
  • Restraining order
  • Preliminary injunctions

Downsides:

  • Long procedure (upto years)
  • Expensive

ACPA's 3 Likely outcomes:

  • Settlements of upto 80-90%
  • Default judgement of upto 10-20%
  • Verdict at trial. Possibility- less than 1%

CASE STUDY: PartnerWeekly to recover PartnersWeekly

Partner Weekly is a client of the company's. This company applied for its trademark in 2004 and in 2006 is granted a trademark for it's company name. PartnerWeekly stumbles upon PartnersWeekly and files with Clarke's company. Mainly, file for trademark early so that you have something to prove.

PartnerWeekly opted for ACPA for its temporary restraining order protection and the possibility to recover damages. They then filed temporary injunctions. PartnersWeekly was served with the suit. With slippery people this can be tough. If things don't work out, take a print ad in the classifieds section. Demand what you want.

In the end, the judge okayed all requests. PartnerWeekly received lawyer fees and $1,00,000.

Next up is John W. Dozier, Jr., Esq., the president of Dozier Internet Law, P.C. John states the example of Caesar's Palace. The hotel can protect its name in casino, hotel, gaming etc. however, if you open a laundromat somewhere they can't do anything about it.

After you start a business and stay for a while, you can get your trademark/domain portfolios name protected. In terms of monetizing other trademarks, John thinks it's risky and that it might put people in a tight spot. In some cases, you can even get your business name trademarked within 30 days. After this, you can go to Yahoo!/Google and ask them to not allow anyone from bidding on it.

When you have evidence that you are doing things legally, you better your chances of w inning. Instead of monetizing sites you can instead protect your domain name under the clause of freedom of speech. Some time you will win other times you'll lose. If things are still okay, both parties can come to a mutually beneficial solution.

International domain law:

Apparently, when you send someone a demand letter, you are upping his chances to take some steps that will stop you from taking all control over the domain name.

Of late , international disputes have seen staggering increase.

Q & A: Joe asks them which side they represent.

Clarke Walton finds defense cases are more fun but he does about half and half. On the other end, John W. Dozier says his company represents more domainers than businesses.

Points to Remember:

  • Google pays attention to state registration. This, they follow on an international level.
  • Misspellings- Keep a check on the log files and keep a note of how peole are finding you. Do this whether it's a .com, .net or a .org.
  • Personal names can also end up being trademarks. These canhowever prove to be more difficult.
4.thumbnail Domain Names and Trademarks   Legal Issues: PubCon Las Vegas Dec 2007, Day 2

Navneet Kaushal

Navneet Kaushal is the founder and CEO of PageTraffic, an SEO Agency in India with offices in Chicago, Mumbai and London. A leading search strategist, Navneet helps clients maintain an edge in search engines and the online media. Navneet's expertise has established PageTraffic as one of the most awarded and successful search marketing agencies.
4.thumbnail Domain Names and Trademarks   Legal Issues: PubCon Las Vegas Dec 2007, Day 2
4.thumbnail Domain Names and Trademarks   Legal Issues: PubCon Las Vegas Dec 2007, Day 2