ACPA | Heitner Legal

Prepare For Trademark Infringement With New Top-Level Domains

Generic top-level domains (gTLDs) include .com, .net, .org, .edu, and other variations in what is considered to be the back-end of a domain name. In 2000, the Internet Corporation for Assigned Names and Numbers (ICANN) introduced .aero, .biz, .coop, .inof, .museum, .name, and .pro. Then, in 2005, .cat, .jobs, .mobi, .tel, and .travel were added to the list of available gTLDs. Further, there is now the option to create a country code top-level domain (ccTLD). For the United States, the ccTLD is .us.

Starting in 2012, there will be many new TLDs, and they will be far from generic and have absolutely nothing to do with any particular country. Basically, any person or company will be entitled to apply for its own TLD. The variations are limitless, but the most valuable TLDs will be the more generic ones. Think about it this way – Grey Goose could buy .greygoose, but what if they won the right to .vodka? These TLDs will come at a hefty price, though. As Mashable.com reports, the application fee is $185,000 and the annual fee is $25,000.

What I find to be the most pressing concern is the future legal battles that will result from the grabbing of others protected trademarks. Cybersquatting on another’s TLD could open up the door to a Uniform Domain Name Dispute Resolution Policy (UDRP) action and/or Anti-Cybersquatting Consumer Protection Act (ACPA) action. The UDRP method is offered around the world and allows for the cancelling or transfer of an infringing domain. ACPA is restricted to the United States and allows for the trademark owner to also recover damages and attorney’s fees.

If you are an individual/company looking to purchase one of the new TLDs, you should first consult an attorney, who will be able to help you through the process of applying for the TLD(s) you are interested in owning and run a trademark search to see if you have a strong chance of being protected from future litigation based on potential trademark infringement.

If you are an individual/company who believes that your trademark is being infringed upon, you should consult an attorney to see if you should engage in litigation. The attorney will be able to advise you as to whether you should file a UDRP or ACPA action and will handle the drafting of necessary documents along with the actual litigating of your claim.

Cyberspace

Coventry First Files Twittersquatting Lawsuit, Probably Won’t Win

Ever since domain names have been open for public registration, domain owners have been guilty of cybersquatting on other peoples’/companies names. Some cybersquatting cases are more clear than others. If I register the domain name BurgerKing.com, it is unlikely that I can defend it by showing a legitimate use for owning the URL. However, if I own burgers.com, it is likely that I am not squatting on any particular company’s name, and instead will be able to retain it without having to pay any fine to its supposed rightful owner.

While cybersquatting originally dealt strictly with sitting on another person/company’s URL, it is shifting to a new arena – social networking sites. Specifically, celebrities and companies are finding their names/marks taken by others when they go to register on sites like Twitter.com. Squatting on peoples Twitter usernames has become so rampant that it has picked up its own term – twittersquatting.

Recently, Coventry First, a global financial services firm, filed a Complaint in the U.S. District Court for the Eastern District of Pennsylvania based on someone creating the Twitter account @coventryfirst. The “About” description for the Twitter name is, (Parody Site) Coventry Firsts Profits of the early death of its Clients. The sooner they die the more $ they make! 1st Amendment. As of writing this post, @coventryfirst has only Tweeted a total of 19 times and has a mere 15 followers. The first thing I think to myself is how exactly has Coventry First been damaged to this point, and how hard it would be to prove those damages.

Within the Complaint, Coventry First includes counts for:

Federal Trademark Infringement
Federal Unfair Competition
False Designation of Origin
Violations of the Anti-Cybersquatting Consumer Protection Act
Trademark Dilution
Unjust Enrichment

Count 4 has no shot and will likely be eliminated in a motion to dismiss. The Anti-Cybersquatting Consumer Protection Act (ACPA) only applies to second-level domain names (i.e. “BurgerKing” in “BurgerKing.com”). A Twitter name is not a second-level domain name.

In order for Coventry First to have a shot at winning Count 1, it will have to show that @coventryfirst creates consumer confusion. Are you confused as to who is the owner of @coventryfirst when you go to Twitter.com/coventryfirst? I doubt it!

Is it even necessary to discuss Count 2? Defendant is obviously not a competitor of Coventry First. As with Count 1, there is no real likelihood of confusion as to who is authoring the Tweets, either.

How exactly has the owner of @coventryfirst been unjustly enriched? He/she has a whopping total of 15 followers and there is no indication that this person wants to or can make any money off of owning the account. Throw Count 6 out.

Defendant did establish @coventryfirst, but is Tweeting 19 times even considered actively using it? Even if the account was pumping out 5 Tweets a day, again, how could a reasonable reader think that the Tweets are coming from someone with authority at Coventry First? Throw Count 3 out for the same reasons that Count 1 and Count 2 do not apply.

Last we are left with Count 5. Perhaps Coventry First’s best arguments are with regards to this Count, but I still think that the company fails with proving trademark dilution as well. Coventry First will have to prove that there has been some blurring or tarnishment of its trademark based on the existence of @coventryfirst. Maybe there have been some damages based on the press resulting from Coventry First’s filing of its Complaint, but certainly not from prior to its filing. Thus, if anything, the company brought the dilution upon itself. This is not something the creator of @coventryfirst should be liable for.

While it does not seem that Coventry First has solid grounds for winning its twittersquatting case, this is an area of law to keep a close eye on. Many people are squatting on others’ trademarks/tradenames and may find themselves in trouble in different circumstances.

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