The .Com Firewall: Is A .Com Registration Better Protection From New gTLD’s Than Trademarks?

An interesting point of view on new gTLD’s, trademarks and .com registrants was published today by Cybrands.com

Basically the author of the post is claiming that owning a .com can be better protection against potentially infringing new gTLD domain names than a trademark.

He calls it the .com firewall:

“In computing terms, firewall has many definitions.”

In domaining terms, what I’m referring to is the practice of registering the .com version of a domain name which can effectively quash incentive for anyone to register any other version of that particular name.”

The fact is that there are several practical advantages and inherent rights protections that are in play that are built into the fabric of owning and using a .com domain name for business purposes. :

Is owning the .com version (and using the name in commerce) of a particular domain name a rights protection strategy unto itself that you could employ. ”

Even possibly equal to or better than a registered trademark?

First of all, as far as your intellectual property rights are concerned. If you own a .com domain name and you use it in commerce you have very likely established common law trademark rights to that name.

According the the USPTO “businesses automatically receive common law trademark rights in the normal course of commerce.”

Common law trademarks are something that I like to call a “usemarks.”

From Bitlaw.com”

The term “common law” indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law. Federal registration, a system created by federal statute, is not required to establish common law rights in a mark, nor is it required to begin use of a mark.

Now if course, registered trademarks are usually more powerful than common law trademarks, however, not necessarily and there is case law to prove that.

My main point has to do with the inherent value of owning the .com version of your domain name or website.

First of all this is the definition of “inherent” from Dictionary.com:

existing in someone or something as a permanent and inseparable element, quality, or attribute: an inherent distrust of strangers.

Here are a few related points:

If you own the .com version of a name, the name is not likely (highly unlikely) trademarked by another party.

The reasons are that if the name were trademarked by another entity you likely would have never been able to register it- or you would have already been asked to cease using it.

Either by court order or less formally.

Either way you would know that there is an issue with the use of the name.

There are too many rights protections mechanisms in place with the domain registries and with ICANN right off the bat. (see Trademark Clearinghouse) for one.

Also, you would have likely gotten tripped up with improper usage of the name if there were any conflicts. The high likelihood is that the business that owns the registered trademark would also have likely already purchased the .com version of the name.

If you use the name for trade/commerce then you have likely already engendered “common law” trademark rights which are actually significant. However, not likely as powerful as a State or Federally (USPTO) registered trademark. However, the “common law” mark could trump them all based on prior use and if it is a “strong” mark. (see usemarks)

The fact is that if you own the .com version of a domain name, no other party is likely to register the name with another extension and use it for business purposes.

Let me give you an example.

Lets say you own the domain name Trinexeo.com.

Just made that domain name up and it is currently unregistered.

So for my example, what if someone registered that domain name and used it for commerce.

They would likely have soon established common law trademark rights as well as developed a business brand with that name.

What if the chance of someone then going out and registering say Trinexia.biz or Trinexia.anything and trying to use it for businesss?

They would be foolish to use that name.

They may infringe your common law trademark.

They may create a confusingly similar business name which is no benefit to them.

So part of the inherent value of owning the .com version of your domain name is that it effectively can serve as an unofficial “trademark block” of sorts to further registrations.

Why would someone else waste their good money on another extension when you own the .com?

They might and you might sue them. They might register another version of your .com name and if they use the name in commerce (in violation of your common law trademark) they will probably send traffic and customers to your site business. They might try to trademark the name after you are already using the .com version in commerce and they will lose in arbitration.

So back to my main point regarding the value of owning the .com version of a good domain name that doesn’t infringe on another parties registered trademark, trade name or usemark. You can take the dot whatever.

I’ll take my .com domain name into battle any day of the week.

I call that my firewall.””””

Like I said an interesting point of view.

Of course we see companies starting on domains that are either available for registration or on the second market which can easily be confused with the left and right of the dot.

The only real case on record is the UDRP for Tes.co where the panel took into account the left and the right of the dot to find the registrant infringed on the TESCO trademark but again that was based on a trademark not just a .com registration.

Anyway interesting.

Day 1 Donuts Trademark Review: Only 12 of 28 Top Brands Bought The Donuts Block (DPML)

According to the WorldtrademarkReview.com, (WTR) only 12 of the 28 top public companies the publication tracked apparently purchased the Donuts’ domain protected marks list (DPML) trademark blocking product.

7 New gTLD strings all by Donuts went live yesterday.

.bike, clothing, .guru, .holdings, .plumbing, .singles and .ventures

According to the WTR; Apple, Microsoft, Walmart, Samsung, Google, Vodafone, Wells Fargo, Chase, BMW, HSBC, Bank of America and McDonalds and Lego all bought the DPML and now have their first 7 new gTLD extensions that Donuts released yesterday.

One company Amazon elected to register their brand in all 7 new gTLD extensions rather than use he DPML.

12 world brands tracked by WTR did not buy the DPML and did not register domains in the 7 extensions released by Donuts yesterday; Citi, China Mobile, IBM, General Electric, Coca-Cola, Verizon, AT&T, Shell, Toyota, NTT, Volkswagen, Home Depot, Pepsi, Facebook

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CNN Covers The Selfie Olympics On Twitter While ICANN Bans Registrations In New gTLD’s

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In the domain name space The Olympics have been given the strongest protections including  ICANN prohibiting the registration any new gTLD containing the word Olympics in it.

However in the rest of cyberspace the Olympics enjoys no such protection.

CNN just covered the “Selfie Olympics” that has been trending on  Twitter.

Not only is the word Olympics being used in a way on Twitter and with Twitter handle in a way not permitted in new gTLD land, the Twitter account uses the  logo includes the 5 Olympic rings.

The logo is not just used on the twitter account but in everyone of the thousands of Selfie’s that have been posted and entered into the Selfie Olympics.

Of course we have seen for many years that courts have said its perfectly fine for Google to sell ads under keywords of trademark holders to the trademark holders themselves or competitors, the same kind of conduct that would subject a domain holder to a $100,000 fine by the same federal court that allows Google to sell the ads.

One day either the laws around domain names are going to have to catch up with the rest of the online world or vice versa

Maybe it will be in 2014.

The Oscars Files Another Suit Against Godaddy Under ACPA Alleging Continued Violations

The Academy of Motion Picture Arts and Sciences which hands out the Oscars has filed anther lawsuit against Godaddy under the Anticybersquatting Consumer Protection Act (“ACPA”).

This suit filed on Novmeber 15, 2013, “supplements a currently pending action between the same parties asserting the same theories of infringement under the ACPA and related state theories that was filed in May 2010, Case No. 2:20-cv-03738-ABC-CW

This lawsuit names additional parked domain names that were not included in the 1st suit.

The lawsuit is basically about two kinds of domain parked pages one where the domain is resolved to a placeholder of a customer of Godaddy which had PPC ads in which Godaddy kept 100% of the revenue and and the second arising from Godaddy cash parking service which seems to operate like a traditional parking company where the owner of the domain receives a share of the PPC revenues.

The Academy of Motion Picture Arts and Sciences filed a lawsuit against Godaddy on the same grounds in 2010, Godaddy allegedly allowed additional domains to be parked but as placeholders and through the cashparking program.

Earlier this month, the 9th Circuit federal court ruled in Godaddy.com favor in another suit Saying No Such Thing As Contributory Cybersquatting exists Under the ACPA.

Here are the more interesting parks of the suit:

“”GoDaddy has deliberately taken, infringed, diluted and/or otherwise used, without authorization, the Academy’s rights in the OSCAR®, OSCARS® and OSCAR NIGHT®, ACADEMY AWARD®, ACADEMY AWARDS® marks have done so through the registration, license, use, trafficking in, conversion, and monetization of Internet domain names that are identical to and/or
confusingly similar to the Academy’s Distinctive & Valuable Marks.

The infringing domains are “parked pages” that have no legitimate business purpose, display no substantive content, and are used exclusively for the display of revenue generating advertisements.

Defendant derives revenue each time an internet user is directed to an infringing parked II domain and an advertisement is “clicked.”

GoDaddy has been, or attempted I2 to, derive revenue from hundreds of such infringing parked domains which demonstrates its bad faith intent to profit from advertising on domain names that are identical to, or confusingly similar to, the Academy’s Distinctive & Valuable Marks.

GoDaddy advertises and procures customers by offering “free parking” of a registrant’s domain name.

Under GoDaddy’s “Parked Page Service”, GoDaddy will park the registrant’s page and place advertisements on the web page while GoDaddy is granted the right to collect and retain all revenue generated by the advertising.

GoDaddy’s registrant-customers do not share the revenue GoDaddy generates from parking their domain names.

Conservatively, GoDaddy has more than 500,000 customers in the State of California and earns revenue in excess of $35 million per year from those customers.

Defendant GoDaddy also utilizes a Cash Parking Program, to monetize parked domain names that are confusingly similar to distinctive, famous and valuable marks.

The Cash Parking Program is a service GoDaddy offers to its customers that permits domain registrants to pay a fee to allow GoDaddy, through its advertising partner, to place ads on the registrant’s web

The revenue generated through this advertising is then split between the registrant, GoDaddy, and GoDaddy’s advertising partner.

GoDaddy has submitted a United States Patent Application for “Systems and Methods for Filtering Online Advertising Trademarks”.

The patent application recognizes the need for systems and methods to filter online advertisements containing third-party trademarks because an unscrupulous domain name registrant could attempt to gain financially by signing up for domain parking advertising using a trademarked domain name notwithstanding that the rightful trademark owners would not want their trademarks used by others to profit from their trademarks.

The patent application reflects both GoDaddy’s recognition of the need-and its ability- to protect against the very illegitimate activity and injury that it promotes and profits from.

GoDaddy knew it was harming trademark holders, such as the Academy, by monetizing domains utilizing their marks.

In fact, GoDaddy provided an example of such harmful activity in its Patent Application.

GoDaddy, as the authorized licensee of the registrants, has licensed, monetized, used and/or trafficked in at least the following domain names in its Parked Page Service, with bad faith intent to profit from the Distinctive & Valuable Marks of the Academy:

2011THEOSCARS.COM
24HOURSATOSCARS.COM
24HOURSATTHEOSCARS.COM
20SCARS.COM
ALLOSCARWINNERS.COM
BILLYCRYSTAL2012ACADEMYAWARDS.COM
BILLYCRYSTAL20120SCARS.COM
NIGHTATOSCARS.COM
OSCARIMAGES.COM
OSCARMOMINEE.COM
OSCARMOMINEES.COM
OSCARMONLINE.COM
OSCARWINNERS2009.COM
OSCARWINNERS2012.COM
THEOSCARS2011.COM
1OOOSCAR.COM
100THOSCAR.COM
BESTPICTUREOSCARNOMINATIONS.COM
BESTOSCARPARTYINTOWN.COM
COMEDYOSCARS.COM
IAMANOSCARWINNER.COM
LETSTALKOSCARS.COM
OSCAR2014LIVE.COM
OSCAR2013LIVE.COM
OSCAR2013LIVESTREAM.COM
OSCARARTPRODUCTION.COM
OSCARAWARD2013LIVE.COM
OSCARAWARDS2013.COM
OSCARHOSTS.COM
OSCARLIVE2013.COM
OSCARNOMINATEDMOVIES.COM
OSCARPICTURES.COM
OSCARS2013LIVE.COM
OSCARSFILM.COM
OSCARSNOBINATIONS.COM
OSCARSWINNER.COM
OSCARWEEK.COM
OSCARWINNERS2009.COM
OSCARWINNINGACTORS.COM
OSCARWINNERS2012.COM
WATCHOSCAR20130NLINE.COM
YOUTUBEOSCARS.COM
ZBIGATTIACADEMYAWARDS.COM
ACADEMYAWARDSWINNERSLIST.COM
WATCHOSCARAWARDS20120NLINE.COM
WATCHACADEMYAWARDS20120NLINE.COM
OSCARNOMINATIONS2013.COM
ONLINEOSCARS.COM
OSCARACTOR.COM
OSCARACTRESS.COM
NOMINATEDBYOSCAR.COM
NOMINATEDBYOSCAR.NET
OMINATEDBYOSCAR.ORG
OSCARMOVIES.COM
OSCARFILMSITESI.COM
ONACADEMYA WARDS.COM
ACADEMYAWARDEE.COM
ACADEMYAWARDER.COM
INDIEACADEMYAWARDS.COM
MUSICACADEMYAWARD.COM
ACADEMYAWARDS2015.COM
OSCAR-MOVIE.COM
OSCAR-MOVIE.INFO
OSCAR-THEMOVIE.INFO
OSCAR-O.COM
OSCAR-O.INFO
OSCAR-W.COM
TOGETHERACADEMYAWARDS.COM
ACADEMYAWARDSNOMINATION.COM
AFRICANACADEMYAWARDS.COM
OSCAR-PG.COM
SAPPHIREACADEMYAWARDS.COM
MILLIONAIREACADEMYAWARDS.COM
MILLIONAIRESACADEMYAWARDS.COM
ACADEMY-AWARDS.ORG
ACADEMYAWARDSMOVIES.COM
OSCAR-MOVIES.INFO
WILDABOUTTHEACADEMYAWARDS.COM
2012ACADEMYAWARDS.COM
2013ACADEMYAWARDS.COM
ACADEMYAWARDS2011WINNERS.COM
ACADEMYAWARDS2012WINNERS.COM
ALLOSCAR.COM
LISTOFACADEMYAWARDWINNERS.COM
OSCARBUZ.COM
OSCARCAP.COM
OSCARWINNINGMOVIES.COM
ACADEMY-AWARDS-POOL.COM
OSCAR-AWARDS-POOL.COM

GoDaddy, as the authorized licensee of the registrants in the Cash Parking Program, has licensed, monetized, used and/or trafficked at least the following domain names, with bad intent to profit from the famous, Distinctive & Valuable Marks of the Academy:

2012ACADEMYAWARDS.COM
2013ACADEMYAWARDS.COM
ACADEMYAWARDS2011WINNERS.COM
ACADEMYAWARDS2012WINNERS.COM
ALLOSCAR.COM
LISTOFACADEMYAWARDWINNERS.COM
MYOSCARORNOT.COM
MYOSCARSORNOT.COM
OSCARBUZ.COM
OSCARCAP.COM
OSCARWINNINGMOVIES.COM
ACADEMY-AWARDS-POOL.COM
OSCAR-AWARDS-POOL.COM

Defendant GoDaddy has continued to permit the domain names listed in paragraphs 29 and 30 to be registered and parked, even though the Academy previously filed a virtually identical lawsuit against GoDaddy for this same conduct and has sent numerous cease-and-desist letters to GoDaddy, demanding that it stop “registering or using the Academy’s trademarks, or any colorable imitations thereof, as domain names”.

The Academy sent the numerous cease-and-desist letters to GoDaddy, and its registrants between August 1, 2007, and February 5, 2010 and filed a lawsuit on May 14, 2010.

Despite the foregoing, many of the domain names that were the subject of these cease-and-desist letters are strikingly similar or identical to the domain names that Defendant GoDaddy permitted to be registered and parked several
years later.

For example:

On July 6, 2009, the Academy sent GoDaddy.com, Inc. a cease-and-desist letter for ACADEMYAWARDSDVD.COM.

Despite that letter, Defendant GoDaddy later permitted OSCARDVD.COM to be registered and parked; and

On February 21, 2008, October 10, 2008, July 6, 2009, July 22,2009, and August 6, 2009, the Academy sent and GoDaddy.com, Inc. cease-and-desist letters for domain names that incorporated variations of Academy Awards with the term “winners.”

Despite those letters, GoDaddy later permitted ACADEMYAWARDS2011WINNERS to be registered and parked.

he ACPA applies not only to individuals and companies who register domain names, but also to:

(1) registrants of the Deceptive Domains;

(2) anyone who “uses” the domain name which is defined as the registrant or the “authorized licensee” of the registrants of the Deceptive Domains; and

(3) anyone who “traffics in” Deceptive Domains, which refers to anyone involved in any transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges f currency, and any other transfer for consideration or receipt in exchange for consideration, whether or not the person is the registrant of the Deceptive Domain.

The ACPA makes unlawful the use, licensing, pledging, trafficking in, or any other exchange of consideration for the use of the Deceptive Domain Names. Defendants’ conduct in monetizing the infringing domains, GoDaddy’s acts as alleged herein constitute the use of and trafficking in infringing Deceptive Domains, in violation of the ACPA with bad faith intent to profit from the Academy’s Distinctive & Valuable Marks.

GoDaddy’s acts as alleged herein constitute cyberpiracy, cybersquatting, and/or typosquatting (a form of cybersquatting based on typographical errors users may make in entering domain names into a web in violation of the ACPA.

The Acdemey is asking for damges of $100,000 per domain plus attorney fees and full restitution of money Defendants have unlawfully obtained, as well as compensatory damages as well as injunctive relief.””

Is .Quebec The Motivation For The UDRP on Quebec.com?

We broke the news this morning that an agency of the Provence of Quebec filed a UDRP on the domain name Quebec.com.

Anything.com has owned the domain since at least 1998 making the domain some 15 years old.

The domain is parked but according to Screenshots.com has been parked since at least 2004 or about 10 years.

So why now?

Why did the government of Quebec decide to go after Quebec.com after all this time?

We think the answer is that the government is supporting the new gTLD of .Quebec which should launch next year .

PointQuébec Inc is the company that applied to operate the .Quebec registry.

A Geographic based new gTLD application must have the underlying support of the government.

We don’t know of course what the financial arrangement is between the registry and the government but typically registries pay the underlying government a percentage or fee for each domain name registered and renewed.

So the government of Quebec will make money off of the success of .Quebec which could be the behind the scenes motivation for the UDRP.

At least one of the principal’s of  PointQuébec Inc,  is  also the one of the principal’s of the SX Registry SA which operates the .SX ccTLD for Sint Maarten.