Posted by: Shemmyla Green
March 26, 2015
Currently there are more than 547 new generic top-level domains (gTLD). A massive increase since the 22 that the Internet Corporation for Assigned Names and Numbers (ICANN) had in 2011 and new suffixes are being released monthly. The benefit of the descriptive domain, such as .fashion and .healthcare, are that they will assist web users in arriving at there intended destination. These new suffixes also differentiate industries, which can assist in a brand’s recognition and marketability. On the flip side, with suffixes like .sucks and .porn, could they induce a potential problem for a brand’s trademark? How does Trademark Law deal with these issues? What should the proactive business owner/brand do?
ICANN is opening up .porn and .sucks, after June 1. They have given a select group of people and company the opportunity to have first claims on these polemical domains. Several brands have already registered these domains, including Taylor Swift. If another public figure was not as proactive as Taylor Swift, what could the outcome be?
Let’s take this hypothetical scenario for instance. What if Hillary Clinton did not register HillaryClinton.porn, by June 1? What if a woman named Hillary Clinton who lives in Canada, who is known in the porn business, buys HillaryClinton.porn and creates risqué website, with political undertones? On Hillary Clinton’s the porn-stars website, she also has a blog called “Talking It Over” that focuses on sexual topics and has tutorials. Clearly the blog was meant to mimics the same titled newsletter the political figure Hillary had, when she was First Lady of the United States.
Hillary Rodman Clinton, the 2016 presidential candidate, and her campaign team may not be too thrilled about this discovery. Over her lifetime, Hillary has built as strong political foundation, as FLOTUS (First Lady of the United States), Senator of New York and Secretary of State. All of her work has culminated for this momentous point in her career, seeking to become the first woman President.
The campaign trail can be treacherous. In the world of social media, most of the time insignificant and frivolous topics, take precedence over issues of relevance. What remedies under Trademark Law are there for this issue? Which remedy would be more beneficial ICANN or Anti-Cybersquatting Piracy Act (ACPA), 15 U.S. Code § 1125? Let’s exam them both.
ICANN has developed a New gTLD Progam and established Rights Protection Mechanisms (RPMs). ICANN stated in their February 2015 review of the program, “The RPMs are designed to be applicable at various times over the life of a TLD. For example, TLD launch processes include a Sunrise period and a Trademark Claims period, supported by verified trademark rights information as recorded in the Trademark Clearinghouse. Once these processes are completed and the TLD is in a steady state of operations in terms of domain name registration, rights holders have mechanisms such as the Uniform Domain Name Dispute Resolution Policy (UDRP), URS, and PDDRP to address complaints about infringement.” I believe that UDRP would be the appropriate remedy for this hypothetical. Let’s break down each RPM.
The TMCH is an ICANN-mandated centralized repository of data on trademarks that are registered, court-validated, or protected by statute/treaty. This database is supposed to provide authenticated information about trademarks to registries and registrars. It is not an RPM in itself, but rather facilitates access to and/or the use of RPMs, notably:
- Sunrise registration periods (during which trademark owners can purchase domain names corresponding exactly to their trademark before the general public);
- Trademark Claims service (where a notice is sent to a prospective domain name registrant of a potential conflict between the domain name being sought and an existing trademark, with a notice also sent to the trademark owner if after being notified of a potential conflict, a registrant proceeds to register the domain name); and
- Uniform Rapid Suspension proceedings.
For this scenario, the Sunrise registration period is over and the Trademark Claims notice was not addressed. Hillary, the porn star, already has obtained the domain and is using it as the URL for her porn site.
Aiming at the clearest cases of trademark abuse, the URS is intended to offer a lighter complement to the existing UDRP (see below). It is not intended for use in proceedings with open questions of fact or more involved legal scenarios. While the substantive criteria of the URS are similar to the UDRP criteria, the URS is supposed to carry a higher burden of proof for complainants. The URS also includes a range of additional registrant defenses over an extended time period. The only remedy a URS panel may grant a successful complainant is the temporary suspension of a domain name for the remainder of the registration period (which may be extended by a prevailing complainant for one year at commercial rates).
Should a panel deny a URS complaint, the URS proceeding is terminated without prejudice for the complainant to proceed with an action under the UDRP or in a court of competent jurisdiction. A panel may also deem a URS complaint “abusive” which may result in a complainant being barred from utilizing the URS for a period of time.
This is not a clear case of trademark abuse, so we would not apply the URS.
Designed by ICANN, the PDDRP is a higher-level RPM and an administrative alternative to court action regarding registries. Involving a number of procedural layers, this mechanism is intended to allow trademark owners to address certain scenarios where a registry operator’s operation or use of a domain leads to or supports trademark infringement, either on the top level or second level. There are three types of PDDRP: the Trademark PDDRP, the Registration Restrictions PDDRP, and the Public Interest Commitments PDDRP. The WIPO Center has been appointed as a provider for the Trademark PDDRP.
Under the PDDRP trademark owners will be required to demonstrate, by clear and convincing evidence:
- a) affirmative conduct by a registry at the top level that infringes a trademark; and/or
- b) at the second level, affirmative conduct by a registry that amounts to a substantial pattern or practice of specific bad-faith intent by the registry to profit from the sale of domain names that infringe trademark rights.
The PDDRP as set out by ICANN states that a registry operator is not liable under the PDDRP solely because infringing names are in its registry, or the registry operator knows infringing names are in its registry, or it did not monitor names registered in its registry.
PDDRP is a longer process that I don’t believe that the camp of Hillary, the politician, would want to endure. Especially when there is another option.
Now let’s look at the Uniform Domain Name Dispute Resolution Policy (UDRP), my RPM of choice for this scenario. Hillary Clinton the political figure would have to prove the following about HillaryClinton.porn:
(a) Domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) Have no rights or legitimate interests in respect of the domain name; and
(c) Domain name has been registered and is being used in bad faith. The remedy, if there is an infringement, is limited to requiring the cancellation of the domain name or the transfer of the domain name registration to the complainant.
The 15 U.S. Code § 1125(d), the Anti-Cybersquatting Consumer Protection Act, only provides protection according to its term where:
A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(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 or section 220506 of title 36.
This remedies under § 1125(d) includes injunctive relief and damages.
Being that time is of the essence in political campaigns and no additional attention needs to be given to this issue, Hillary and her campaign team would probably want to receive resolution under ICANN’s UDRP. No court system and the transfer of the domain name to her would be an ideal remedy for this situation. But given the facts of this hypothetical, Hillary, the political figure, might not have an effective claim. Clearly the two Hillarys are in two separate industries, which will not be confused with one another. Hillary the porn stars real name is Hillary Clinton, so she has a right to the domain. There is no bad faith intent. The bad faith argument would only work well, if the Hillary, the porn star, reached out to the Hillary political camp and made them an offer to sell the domain. Those facts would be similar to a real recent UDRP proceeding, with Sophia Vergara. The World Intellectual Property Organization (WIPO) panel recently found in favor of Sofia Vergara for her objection to registration of the fan website sofiavergara.org domain name. The domain owner attempted to sell the domain to Vergara for $10,000, which established bad faith.
One thing we forgot was jurisdiction. If there were an infringement of the Anti-Cybersquatting Consumer Protection Act, what could be done with Hillary the political figure being in the United States and Hillary the porn star being in Canada. According to ACPA, 15 U.S.C. § 1125(d)(2), the owner of a mark may file an In rem action against a domain name if:
(A)(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and (ii) the court finds that the owner (I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or
(II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by (aa) sending a notice of the alleged violation an intent to proceed under his paragraph to the registrant of the domain name at the postal and e-mail address provided the registrant to the registrar; and (bb) publishing notice of the action as the court may direct promptly after filing the action.
(B) the actions under subparagraph (A)(ii) shall constitute service of process.
As ICANN continues to make available more domain suffixes, this type of issue will be an on going problem for brands and their trademarks. The moral of the story is to buy in advance as many gTLD domains that relate to or could be a hindrance to your brand. Being proactive is better than being reactive.