Meet the Lawyers IP Discussion at the TRAFFIC Domain Conference 2007

Do domainers know where to draw the line? “There is no question that the TM laws and how they are applied online are NOT consistent with the decision making for offline enterprise. Someday there will be hundreds of reversals as domains taken wrongly from domainers that were not actually violating a trademark.

Then we have a separate issue as it is Google and Yahoo that actually traffic and make all this profitable whether right or wrong, violation or not. There are a lot of moving parts to all this and not everything is obvious. There are nuances that can be legally exploited. The thinking has yet to catch up with the technology. Some of the issues are so gray that one could argue on either side for or against. This panel will let it all hang out. A heated debate from all sides will be the result.”

Jeremiah Johnston COO & General Councel Sedo,
Steve Sturgeon Esq. CEO Sturgeon Law Group
Ari GoldBerger Esq. of EsqWire.com.
Paul Keating, Esq.of Renova Ltd
Dr. John BerryHill Esq. of JohnBerryhill.com
Phil Corwin Partner Butera & Andrews…Lobbyist for the ICA

The expansion of trademark laws
Trademarks are issues we have to deal with. When the US was founded, there were no trademark laws. Over time, others were using others’ corporate name and the concept of fraud came into the picture. Lawmakers can establish monopolies for good reasons.
Trademark remedies:
Injunction
Damages susteained by plaintiff
Treble damages

Domain name laws:
Trademark infringement
Icann domain name dispute policies
Anticybersquatting consumer protection act of 1999

Plaintiff chooses arbitration organicstion. Arbitration organicastion chooses arbitrators. Is that fair? What is next? The panelists that are on the panels that favor the domainers don’t get on the panels.

Anticybersquatting consumer protection act

The trademark owner will sue you in a remote court.
New abuses:
Domainer purchases domain name
Plaintiff offers to buy domain name
Domainer does not want to sell
Plaintiff files for trademark
Plaintiff initiates UDRP
Plaintiff loses UDRP
Plaintiff sues in federal court for $$$$$

There are many USPTO registered trademarks (for example, UPS has the trademark for Brown.). There are state registered trademarks, foreign country registered trademarks.

Cybersquatting claims are a vicious weapon.
How can you protect yourself? Anticipate problems, evaluate which could want your domain name. use your domain in safe ways. Beware of offers, which are often disguised to get you to say something that’s incriminating that they’ll use against you in federal court. You can be sued, you can be overwhelmed, your domain name can be taken away from you.

Dr. John BerryHill Esq. of JohnBerryhill.com
Word Mark Bully
Mops and floor brushes is one bully. Another bully is lawn mowers, namely walk-behind lawn mowers and ride-on lawn mowers of less then 12 horsepower.

There lots of things in the USPTO database. Just because there’s an entry that’s in the database doesn’t mean that there’s a trademark on the name. There’s an impression that the domain registerants that are exploiting the domain names. For a search engine to return results or alternatives, that’s not trademark infringement. It’s not trademark infringement in the real world to put like products near other products on the shelf.

Look out for magazine trademarks like golf, money, people, etc. Magazine owners tend to push around domainers.

Phil Corwin Partner Butera & Andrews…Lobbyist for the ICA
Trademark lawyers have discovered domains as a growth industry. They’re looking for new business and grossly exaggerating trademark infringement. Unlike patent and copyright law, trademark laws are based on protecting the consumer by protecting the consumer from buying something from someone other than the trademark owner.

They claim that $6 billion dollars of counterfeit goods were bought online last year because of cybersquatting. That’s just not possible. They claim that cybersquatting contributes to more phishing. They claim a connection between domain tasting and phishing and there’s just not any correlation between the two of them.

Trademark owners are trying to prove statutory damages.

Google sells ads against trademarks. Courts are saying that it’s okay.

Explaining internet issues to politicians isn’t easy. But they understand domain names. They understand buying ads against their competitors (Hillary ads show up when you search Google for Rudy Giuliani).

For protection, if you are the one owner and you individually violating the trademark then you are going to be named in the lawsuit. If you set up an organization that owns the domain name then that entity will be named in a lawsuit.

The TLD, .com .net and .org etc. does not have anything to do with the trademark. Just because if someone’s operating with a trademarked name, doesn’t mean that they’re operating it legally; they may get challenged at some point. Every situation is different when it comes to trademarks. Every case is different.