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.

 

 

 

Overstock.com Sues NoMoreRack.com For Trademark Infringement For Buying Keyword Ads Under Overstock

Overstock.com filed suit in the Federal Court for Utah for trademark infringement against NoMoreRack.com apparently over NoMoreRack.com’s use of the word Overstock in its ads and for buying keyword advertising under the term Overstock.

Here are the relevant parts of the Complaint:

“Overstock.com, Inc. files this Complaint for trademark infringement and unfair competition, and seeks a preliminary injunction, a permanent injunction, and damages against Defendant Nomorerack.com and alleges as follows:

“Upon information and belief, Nomorerack owns and maintains NoMoreRack.com, an online website that has been operating in the United States since 2011 and sells a wide variety of discounted consumer goods to individual consumers exclusively through its website.

Nomorerack competes directly with Overstock as an Internet-based discount retailer.

Nomorerack has a “D-” rating with the Better Business Bureau of New York, where Nomorerack has its headquarters, and has been the subject of at least 1,301 complaints closed by the Better Business Bureau of New York in the past twelve months, including advertising/sales issues; billing/collection issues; delivery issues; guarantee/warranty issues; and problems with products/service.

Notwithstanding Overstock’s well-established rights in and the strength of the OVERSTOCK Marks and Trade Dress, Nomorerack and/or its agents have been using the OVERSTOCK Marks and Trade Dress, or marks confusingly similar thereto, in conjunction with the advertising and promotion of Nomorerack’s competing website.

Upon information and belief, Nomorerack’s Internet advertising strategies and techniques are, in part, targeted specifically at Overstock.com’s customers.

Upon information and belief, Nomorerack is purchasing the terms “OVERSTOCK” and “OVERSTOCK.COM” as advertising keywords as part of its Internet- based advertising efforts.

In addition, upon information and belief, Nomorerack is purchasing data regarding the Internet activity of individual consumers to identify targets for its advertisements, including individual consumers that have visited Overstock.com’s websites. Upon information and belief, Nomorerack is using this data to send targeted, customized, and misleading advertisements for its own products directly to customers of Overstock.com.

At least as early as February 2012, Nomorerack began promoting its discounted consumer goods through Internet-based advertisements that featured the term “OVERSTOCK” prominently at the top of the advertisements, using a font nearly identical to that used by Overstock, with phrases such as “OVERSTOCK CLEARANCE” and “Overstock iPads.”

On or before November 2013, Nomorerack continued its use of the term “Overstock” prominently in its Internet advertisements, and added a rectangular red banner as part of its usage. For example, an advertisement on November 2, 2013, Nomorerack included a heading at the top of the ad stating “OVERSTOCK CLEARANCE” that was surrounded by a red banner, and employed a font very similar to that used by Overstock.

In these advertisements and others displayed on the Internet, Nomorerack intentionally and regularly capitalizes “Overstock” as though it was a proper noun to foster additional confusion with the Overstock.com brand. Nomorerack also employed keyword advertising and other methods to direct the misleading advertisements described above to individuals searching for Overstock on the Internet and/or who had recently visited Overstock’s websites.

On February 24, 2012 and November 5, 2013, Overstock sent letters addressed to Nomorerack informing it of the OVERSTOCK Marks and Trade Dress, explaining its belief that Nomorerack’s actions were likely to cause confusion in the marketplace, and asking Nomorerack to cease its use of the term “OVERSTOCK” in its advertisements. True and correct copies of the letters are attached hereto as Exhibit B.

Nomorerack never responded to either of the letters sent by Overstock.

Defendant’s unlawful use of the OVERSTOCK Marks and Trade Dress is likely to cause and has caused actual confusion in the marketplace among consumers.

Defendant’s unauthorized use of the OVERSTOCK Marks and Trade Dress is likely to cause confusion (and has actually caused confusion), deceive, and mislead the consuming public as to the source, origin, or sponsorship of the goods and services offered by Nomorerack. Defendant’s actions are likely to cause confusion (and have actually caused confusion), deceive, or mislead the consuming public into believing that the services offered by Nomorerack originate from Plaintiff or that there is some connection between Plaintiff and Nomorerack, thereby causing Plaintiff irreparable harm.

Plaintiff’s and Nomorerack’s services are highly similar and move through comparable or identical channels of trade to similar or identical classes of consumers. Indeed, Defendant, upon information and belief, is taking unfair advantage of the market and customers cultivated and properly serviced by Overstock.

Defendant has willingly and knowingly violated and infringed the rights of Plaintiff in its OVERSTOCK Marks and Trade Dress, with the intention of causing confusion, deceiving, or misleading customers, and Defendant has wrongfully traded on the goodwill and reputation of Plaintiff.

Defendant’s conduct and practices have caused, and will continue to cause, irreparable harm for which there is no adequate remedy at law, and for which Plaintiff is entitled to injunctive relief and damages.

Defendant’s acts as alleged above are without license or consent of Plaintiff.

Defendant has utilized the OVERSTOCK Marks and Trade Dress with full prior knowledge of Plaintiff’s rights in and to the OVERSTOCK Marks and Trade Dress, and Defendant’s use of the OVERSTOCK Marks and Trade Dress was and is for the willful and calculated purpose of trading on Overstock’s goodwill and business reputation as embodied in and symbolized by Plaintiff’s OVERSTOCK Marks and Trade Dress.

Defendant has marketed Nomorerack’s products and services in such a manner so as to inevitably suggest an association, affiliation, sponsorship with, or approval by, Plaintiff.

Defendant’s acts have caused, or are likely to cause, confusion, to deceive, and to mislead the consuming public as to the origin or sponsorship of the goods provided, all to the profit of Defendant and to Plaintiff’s detriment.

Defendant’s conduct constitutes infringement of Plaintiff’s common-law rights in and to Plaintiff’s OVERSTOCK Marks and Trade Dress, and further constitutes common law unfair competition with Plaintiff.

As a direct and proximate result of Nomorerack and/or its agents’ conduct, Overstock has suffered irreparable harm and is entitled to injunctive relief. In addition, Overstock is entitled to money damages, the amount of which will be established at trial.

PRAYER FOR RELIEF

WHEREFORE, Overstock prays for judgment as follows:

That Defendant and its officers, agents, servants, employees, attorneys, and all persons in active concert or participating with any of them be preliminarily and thereafter permanently enjoined from using, in connection with their business affairs, the OVERSTOCK Marks or anything which so resembles the OVERSTOCK Marks so as to be likely to cause confusion, deception, or mistake, including, but not limited to, using the term “Overstock” in conjunction with any of its operations, including on any of its mass e-mails, advertising, or promotional materials, as previously described herein;

That Defendant be ordered to deliver up for destruction any and all materials in its possession, control or custody, including but not limited to, signs, packaging, forms, advertisements, business cards, letterheads, circulars, boxes, and/or other representations and means for producing the same, whether in hard copy or electronic media, that make reference to or use any designation or mark that is confusingly similar to the OVERSTOCK Marks;

That Defendant be required to account for and pay to Plaintiff three times all gains, profits, and advantages derived by Defendant from the trademark infringement and unfair competition described herein;

An award of damages pursuant to 15 U.S.C. § 1117(a), including Defendant’s profits, damages sustained by Overstock, and costs of the action

An award pursuant to 15 U.S.C. § 1117(b) of three times Defendant’s profits as enhanced damages;

For a finding this is an exceptional case pursuant to the Lanham Act and an award of reasonable attorney fees;

Reasonable attorney fees, investigatory fees and expenses, together with prejudgment interest.”‘

The case is

No. 2:13-cv-01095-PMW