Whew - sorry for the long time between posts.  The last six months have seen explosive growth in our client base and matters handled and we’ve been working hard to serve our new clients.  We are fortunate to have acquired a great group of interesting and talented entrepreneur clients working in a wide range of cutting edge Internet businesses.  We have been drafting solid terms of service agreements, privacy policies, web development contracts, web business purchase agreements, and handling a host of other transactional matters for these clients.  To help deal with this welcome boom we have recently moved offices and added staff so I’m aiming to get back to a more regular blog posting schedule. 

While we handle numerous types of Internet law business matters, one area that I enjoy the most is domain name arbitration cases.  We help entrepreneurs and businesses through the UDRP arbitration process to recover domain names that they should rightfully own.  Our most recent victory on behalf of our client involved a non-U.S. registered trademark (the mark is registered in the British Virgin Islands).  The entire publicly available case decision can be found here: http://domains.adrforum.com/domains/decisions/1191809.htm.  The panel reaffirmed that trademark registrations in countries other than the U.S. are respected.

Another interesting case we handled recently involved the name of a celebrity and his common law trademark rights in his own name as a domain name.  There have been a line of past cases discussing the common law rights that arise in the name of a famous person and that makes these rights enforceable, even without a registered trademark.  That UDRP decision  and references to the prior cases in this area can be found here: http://domains.adrforum.com/domains/decisions/1106240.htm.

Of course, not every case has to go to arbitration and we’ve successfully recovered domains (or defended their ownership) without the need for a UDRP complaint but when needed we don’t hesitate to taking that step. And part of what makes the process so interesting is that every situation is so fact-specific.  Which is why we’re required to say that every case is fact-specific and unique and that prior case results do not necessarily predict or guarantee a similar result in the future.  If you think someone has a domain name that should belong to you, or if someone is making that claim about a domain name you own, don’t hesitate to contact us so we can discuss whether we can help you.

As I mentioned back in October of last year, ICANN approved a new .asia domain.   An article by the Associated Press today states that the new .asia domains will be released in October, 2007. Registration will be opened up to governments and long-time trademark holders first on October 9, 2007.  Companies and more current  trademark owners will be allowed to register starting on November 13, 2007 and continuing through the end of the year.  The open landrush will probably start in January, 2008, although no firm date was specified.

The new .asia domains are intended to be a regional domain (like .eu).  Interestingly, a plan has been in place to auction general domains that have interest by more than one potential registrant.  It will be interesting to see how that works out. 

Renew your domain names now because the price is going to go up.? This article details the 7% price hike that is coming for .com and .net addresses.? You can avoid the increase (at least temporarily) by renewing your domains before it kicks in.? And, as I’ve said before, make sure you’re registered with a reputable registrar - I continue to see people getting ripped off by fly-by-night resellers…

ICANN, the organization that oversees domain names, voted to reject the implementation of a .xxx top level domain for the third time. Neither the adult content industry nor religious groups liked the proposal, though for different reasons (pornography co’s think it will lead to more and easier government regulations and religious groups think it will validate and increase the number of adult content sites).

The only one that seems disappointed is the company that was seeking to oversee the registrations (obviously a lot of money at stake if the new TLD was to be approved)…

Domain name tasting is the practice of registering a bunch of domain names and monitoring them over a few days to see which receive enough traffic to generate ad revenue that exceeds the registration cost. The practice takes advantage of a “loophole” in the registration system that allows for a return of domain names up to five days after registration. It was designed to allow for corrections of legitimate mistakes, such as misspellings, but is now being regularly abused.

According to this article by the AP, Neiman-Marcus, the large retailer, is fighting back by accusing Name.com and Dotster.com of engaging in domain tasting by registering more than 40 domain names that allegedly make unfair use of Neiman-Marcus’ registered marks.

Microsoft, as part of their trademark protection strategy (which I have discussed before) is also after domain tasters. I’m sure other large trademark holders are actively patrolling for this, as well.

The National Arbitration Forum, an approved arbitration firm for resolving domain name disputes, announced this week that they saw a 21% rise in domain name arbitrations in 2006 compared to 2005. In total, 7,600 domain name disputes were filed with the NAF in 2006.

The probable reason for the increase is because of the continually rising values of a good domain name and the quick and relatively inexpensive resolution of these disputes with arbitration versus litigation under the ACPA. If someone is violating your trademarks with their domain name, a UDRP arbitration can often be the best way to get your domain names back…

Unlike many local offline businesses, when you’re operating an Internet business you obviously realize that you’re available world-wide to a world-wide customer base. This can lead to conflicts between your trademarks and those of a business owner many countries away.

Recently, Google had trademark difficulties with its “GMail” mark in Germany because it conflicted with a German company that had been using “Gmail” for its own services before Google. As reported here, “the Office for Harmonization in the Internal Market has ruled against the search giant’s use of the Gmail name” in Germany because of the confusion. Google now has to use a different name for its popular free email service in Europe.

When you’re developing (or expanding) your online business, spend some time searching globally for other users of your intended mark. This may help you avoid problems as your business grows.

When you own a domain name, especially one that is popular and valuable, you have to constantly be aware of its status with the registrar so that it doesn’t get hijacked or misappropriated. Normally, this means that you do the obvious things like renew the domain registration on time, use accurate registration contact information, and secure your registrar log-in and password so your account can’t be hacked. But, even if you do all those things, you still have to be on the lookout for overt attacks on your domain.

Google’s German domain, Google.de, was recently hijacked when someone submitted paperwork to change registrars. As this article states, apparently the paperwork was not examined and Google did not respond in a timely fashion which lead to the domain being transferred for a short period of time. Google, being so large and well-known, was able to get their domain back relatively quickly and painlessly. A lesser well-known company would, and often does, have a much harder time reclaiming their domain. So, keep an eye on your domain so this doesn’t happen to you.

ICANN, the non-profit organization that oversees domain names and who I recently posted had agreed to establish a .Asia top level domain, is receiving pressure to allow domain names in non-latin characters such as arabic. This lead the CEO of ICANN, Paul Twomey, to recently declare that a move to non-English characters could “break the whole Internet.”

While I think that may be a bit dramatic, I do agree that issues such as the potential for fraud, phishing, and the like should be resolved before the domain system is opened up to non-Latin characters. And if there are characters that overlap and are similar in multiple languages, it will be interesting to see the land-rush registrations and resulting domain arbitrations that ensue…

If you follow Internet business, you have probably already heard of the plight of poor Utube.com, the website of Universal Tube and Rollform Equipment Corporation, an Ohio firm. Millions of visitors happen on their site every month looking for the video sharing site YouTube.com (reportedly 68 million “hits” in August), which uses a tremendous amount of bandwith and costs them a lot. They are now suing YouTube.com (recently purchased by Google) for these damages.

I’m not going to comment on the merits of the lawsuit but I am surprised that UTube.com isn’t seeing the big picture and trying to make lemonade out of lemons. If I were them, I would put Google Adsense ads on the domain while the litigation is pending to try to make some money. With 68 million hits a month, they should do okay. And the irony would be fun.

Actually, given that there is no way that Universal Tube and Rollform Equipment Corporation would lose a domain dispute over the UTube.com domain (they registered it in good faith long before YouTube.com was even an idea), I would probably keep the domain and develop a new one for company use. Multiple revenue streams and all…

CBS Marketwatch published an interesting article on the current state of blogs as a money-making venture, quoting the founder of Technorati as stating that “a few thousand people are making their living by blogging.”

To me, this isn’t so surprising. There has always been a market for strong content and good writers have always found a way to get paid, whether it’s from publishers or advertisers. Maybe blogging is the first actually legitimate “work from home” scheme out there. Find a topic you’re passionate about and start writing…

Following on the creation of the new .mobi domain for mobile devices, ICANN announced today that it has authorized a new “.Asia” domain. As with the .mobi domain, trademark owners will get first crack at registering their domains with the new .asia extention. It will be interesting to see the adoption rate of these new domains…

Someone pointed out this part of the Bessemer Ventures website that has to be seen to be believed. It is their “anti-portfolio” in which they detail the investments that got away. These ventures were turned down for financing and have turned out to be huge successes.

Having pitched to many, many venture capitalists in the past (and been turned down by many), it is refreshing to see a group admit that they don’t always know how a start up company is going to do, especially when they do so with such humor. Now, Bessemer Ventures has had huge success over its long history so it’s easier for them to admit mistakes, but it’s still rare and admirable. Check it out for yourself…

Amazon.com announced that they are now offering TV shows and movies for download from a wide variety of content providers, including CBS, MTV and the Discovery channel (but not ABC or NBC, interestingly enough). The shows and movies are playable on computers and digital portables, but not yet on your TV. Obviously, true on demand viewing of all shows and movies on your TV screen (rather than just on computer or portable digital player) is the ultimate winner for this area. Comcast and other home cable companies should be able to deliver that before anyone else but the opportunity is out there.? And it should be interesting to see what Disney (ABC) and NBC offer, given that they elected to stay out of this deal.
To jump start the new area, Amazon is offering a free trial of the service. Well, sort of. It’s in the form of a $1.99 rebate…

My prior post on Microsoft’s filing of lawsuits under the ACPA (”Anticybersquatting Consumer Protection Act”) rather than under the more common UDRP (”Uniform Dispute Resolution Policy”) raised some questions regarding the differences between the two proceedings and why one would proceed under the ACPA rather than the UDRP.

The main difference between the two is that under the ACPA, your remedies are not limited to just getting the domain name transferred to you. You can also seek money damages, like Microsoft intends to do. However, money damages are not automatically granted - you must prove damages so having a registered trademark in the domain in question will help a lot.

The other major difference is the length of time required to complete the process. The UDRP is intended to be a quick, simple process which generally gets finalized within 90 days of the filing of the complaint. The ACPA proceeding, though, is like other federal lawsuits and can take months and even years to finalize, depending on how vigorously it is contested. So, if your real aim is to get the domain as quickly as possible, UDRP is a better choice.

So, given that, why would someone choose proceeding under the ACPA versus the UDRP? (1) they want money damages which aren’t available under the UDRP and feel they have a good chance of getting them; and/or (2) they believe the current domain owner will appeal the UDRP decision if they lose and they don’t want to waste the time or step of the UDRP process. (The loser in a UDRP case has ten days to appeal the decision to transfer of cancel the domain name by filing a lawsuit).

Microsoft is getting tough on domain name registrants that misuse Microsoft trademarks, according to this article. If you have read other posts on this blog, then you know that domain name disputes can be settled under the UDRP through domain arbitration. There is another method that can be used, however - namely suing the registrant in Federal court under the Anticybersquatting Consumer Protection Act (or “ACPA”).

Unlike the UDRP domain arbitration process, trademark owners can recover damages of up to $100,000 for every violation of the Act. Microsoft is choosing this route rather than the quicker and cheaper method of UDRP arbitration to make a point and set an example for others that may be tempted to register domains containing Microsoft registered marks in order to gain parked page revenues. Of course, collecting on a judgment has historically been a lot harder than getting the judgment in the first place so only time will tell how this will play out for Microsoft.

I receive a lot of questions about the domain name arbitration process. One of the most common from potential complainants (those seeking to get a domain name away from someone else) is this, which I just received again:

“I don’t have a registered trademark in the domain name but I have been using the name for many years and think I have more rights to it than the current owner. Is it possible to win the case?”

The answer is: Yes, it is possible to win a domain dispute even without having a registered trademark. The first of the three tests for prevailing in a domain dispute is: “Does the complainant have trademark rights in the domain?” Obviously, if the complainant has registered the mark with the USPTO, that is an easy answer. However, there is another way to get to the answer: common law trademarks.

A common law trademark arises after use over a substantial period of time such that the mark has earned “secondary meaning.” Simply put, “secondary meaning” means that the public thinks of your product or service when they see or hear the mark. An example of this is Coke for soft drinks or Blockbuster for movie rentals. If you can show secondary meaning, which is an argument that must be made by careful matching of the trademark requirements with the specific facts of your situation, you can establish a common law trademark.

I recently won a domain name arbitration case for a client that did not have a registered trademark but had been using the mark for many years in a way that we were able to prove gave the mark secondary meaning.

The bottom line is that a registered trademark isn’t required to win a domain dispute (although it certainly makes it easier). If you would like to discuss your specific situation, you should contact me to take advantage of our free consultation.

I had a little bit of deja vu back to the “good old days” of the late ’90’s pre-Bubble bursting when I saw this press release from Level 3 touting a new service agreement with MySpace.com, the object of much discussion and speculation in the online business world. Internet companies used to tout every new deal like this to leverage the buzz around the other site and positively impact their stock price. Sure enough, Level 3’s stock price popped 5% in less than two days, almost double the NASDAQ’s general performance. Of course, that is a lot of bandwith that MySpace will be buying from Level 3 so it should have a good impact on Level 3’s revenues…

According to this article in the NY Times, ICANN - the non-profit agency that oversees domain name registrations and regulations - has renewed its contract to provide these services for another five years. Internationally, the fact that ICANN is located in California, USA and has a deal with the U.S. Department of Commerce is sometimes unpopular and viewed as not truly neutral. It has to be somewhere, though, and its function is necessary to provide a uniform system (as much as possible)…

ICANN, the organization that oversees domain names, has authorized a new top level domain targeted at mobile devices. The new top level domain (or TLD) is .mobi and will be open for general use and registrations on August 28, 2006. There is alreadly limited registrations allowed for those that can prove they have a trademark in the domain (i.e. hopefully for Microsoft, they have already grabbed Microsoft.mobi).

Even though early registration is being allowed for trademark holders, I am sure that many big brands will fail to grab their trademarks for .mobi and will be quickly filing domain arbitration complaints to recover “their” domains. WIPO and the National Arbitration Forum should be ramping up staff to handle the inevitable increase in filings.

AOL to move towards free services I saw this article this morning which discusses anticipated moves by America Online to offer access to users that obtain their Internet access from a third party (most commonly through broadband I would say) provider for services and features for which they have previously charged a fee. Given the dramatic exodus of their dial up subscibers over the last couple of years, this move is not surprising (they’ve lost more than a third of their customer base in the last three years).

I’m sure the underlying strategy is that AOL can still capture ad revenue from users that will prevent dramatic decreases in revenue from dial up defectors. I would also assume that AOL will focus more on leveraging Time Warner content properties in premium-access-for-a-fee packages. If you’re a content provider it’s probably a good time to approach AOL for a deal - just be aware that they’ll probably be looking for some level of exclusivity.

Welcome to the Internet Law Blog! This blog is intended for Internet entrepreneurs and web business owners that are interested in Internet legal issues and information regarding Internet deal-making. I am a lawyer that specializes in representing Internet businesses. I negotiate and draft Internet contracts and website agreements that protect my clients while helping them grow their businesses. I have been handling Internet legal issues for more than a decade and was involved with Internet businesses from the very early days of the commercialization of the Web. For more information about my background, check out the About Us section of my law firm website at www.Internet-Legal.com.

I enjoy helping companies and entrepreneurs craft and close stategic partnerships that boost business dramatically and I have extensive experience negotiating with partners of all sizes to make deals that are advantageous for everyone involved. I have negotiated and closed deals with almost every major Internet company out there, including AOL, Yahoo, Microsoft, Intuit, Amazon.com, and more.