Young Practitioners Explore Domain Names and Trademarks

The U.S. Patent and Trademark Office issued U.S. Reg. No. 1,675,229 for WHAC-A-MOLE in connection with an “arcade, carnival and amusement type activity game” on February 11, 1992. Decades later, speakers made numerous mentions of this mark during a virtual event hosted by INTA’s Young Practitioners Committee on Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings and domain name disputes.

The panelists referenced the Whac-A-Mole game, which involves repeatedly striking one target only to have another one pop up somewhere else, as analogous to the practice of managing and enforcing domain name disputes.

The Young Practitioners Virtual Event: Domain Names & Trademarks took place on April 29. Addam Kaufman (Oracle Corporation, USA), a Young Practitioners Committee member, moderated the session. The speakers, experienced in the field, were Steven M. Levy (FairWinds Partners LLC, USA), Diane J. Mason (Faegre Drinker Biddle & Reath LLP, USA), and Johanna Sistek (Oracle Corporation, USA).

The expert panel presented key issues, addressing cybersquatting, “human hacking” phishing schemes, and preemptive domain name registration. There was also fondish reminiscing around the early days of the Internet and “link farms”—websites that would capitalize on typos and provide click-through links for users to arrive at the intended website in a monetized journey.

In today’s stay-at-home world, online commerce is essential. “Entrepreneurs” will scour news articles and monitor trademark filings, identifying up-and-coming brands and keywords and registering relevant domains to capitalize on a brand owner’s success.

In addition, domain name practitioners face new challenges when attempting to enforce a trademark owner’s rights. Recent privacy laws (such as the European Union Global Data Privacy Regulation) have significantly altered strategies of online enforcement related to domain name infringement.

Where the WHOIS database formerly made the identities of domain name registrants publicly available, blanket redaction has curtailed this tool significantly. One panelist affectionately referred to the database as “WHOWAS.” Because, in the author’s view, most clients are reticent to allow their law firms to jam a demand letter into a bottle and throw it into the ocean, alternative means to ascertain the identity of an infringer are now required. Speakers urged attendees to get creative: scour relevant websites for potential contact details, attempt contact with the domain registrar, and find out “WHOWAS” through historic snapshots of the infringing site.

While solutions to the “WHOWAS” issue are being considered, the panel encouraged attendees to look for creative means and nontraditional opportunities to address the problem.

According to Mr. Levy, UDRP can be a low-cost alternative to formal litigation, and the proceedings come with the corresponding benefit of contracted personal jurisdiction. ICANN policy is readily accessible and the WIPO Jurisprudential Overview 3.0 is available in English.

A domain registrant is usually unmasked during UDRP proceedings, enabling a brand owner to identify the infringer and engage in additional enforcement efforts if there is evidence of a pattern of infringing behavior. Because the cost of a UDRP proceeding can be considered nominal compared to other efforts, initiating a proceeding may serve as a cost-effective means for a client to unmask a bad actor.

That said, practitioners should keep in mind that settlement may yield more benefit to the brand owner than seeing the UDRP proceeding through to a satisfactory conclusion. UDRP decisions may be challenged in the courts; a settlement agreement might be used to not only address such a challenge but also to codify the infringer’s representations and warranties concerning non-infringement and future acts.

Regardless, the panelists said practitioners should assess all risks, even the ones to which the conclusion may seem obvious. They encouraged the following approach: (i) investigate the actual date of first use of the relevant mark; (ii) look realistically at the client’s budget and costs of enforcement; and (iii) thoroughly analysis of likelihood of confusion. And, of course, practitioners should advise their client concerning all potential outcomes.

Ms. Sistek cited an extreme U.S. example where a UDRP proceeding resulted in a favorable outcome but then a transfer of the domain was delayed because the infringer brought an action for defamation based on the proceeding. This outcome is not only unfortunate for a client attempting to conserve costs, but also a touch ironic, considering the Lanham Act’s application to causes of action for business defamation.

This example is the kind of thought-provoking material INTA’s Young Practitioners Committee offers, along with educating new domain name practitioners to advise clients to measure site traffic, identify primary brands, and avoid the feeling that online enforcement is like playing a game of Whac-A-Mole.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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