Protect Your Trademarks from .XXX Domain Registrations

Posted on October 13, 2011 by Tyson Snow

A quick reminder for trademark owners: the new top-level .xxx domains open for public registration on December 6, 2011. We all know the perils of having some unknown person register your trademark or domain only to redirect it to a less-than-flattering site. Recognizing the significant amount of negative publicity and harm that trademark owners and businesses could experience as a result of infringing .xxx TLDs (top-level domains), ICANN has provided a “Sunrise B” period for trademark owners to “register” blocks on their domains prior to making the domains available for general registration (the Sunrise AT and AD periods allow owners of adult-orientated trademarks and domains to pre-register their sites). In other words, if you want to prevent someone from using your trademark in a .xxx domain, you can register under the Sunrise B provision before the public at large can attempt to get a .xxx domain using your registered mark(s). The last day to register under Sunrise B is October 28, 2011.

According to GoDaddy (my registrar of choice–and no, I don’t receive anything from GoDaddy for that recommendation (see how I followed the FTC rules regarding blogger disclosures?)), here is what you need to know about the Sunrise B period:

Sunrise B blocks are available to those who own a qualifying registered trademark outside of the adult industry that was registered prior to September 1, 2011. A Sunrise B registration will protect your brand / trademark by blocking others from registering it as a .XXX.

Points of significance:

Sunrise B registration is NOT a domain registration; it is a block to prevent a third party from registering your trademarked name as a .XXX domain.
The one-time fee ($199 at GoDaddy and most registrars) blocks your trademarked name for 10 years.
The one-time fee is non-refundable and cannot be reversed.
Since this is not a domain registration, you do not need to provide a website or content.
Reserved names will resolve to a standard information page indicating that the name is reserved.

Here are the requirements you must meet to take advantage of the Sunrise B period and effectively block .xxx registrations of your trademarked name; you must have and be able to provide:

Trademarked Name
Trademark Registration Number: The registration number for your trademark (not your application number).
Nation Code: The country where your trademark was registered.
Trademark Registration Date: The date your trademark was registered.
Trademark Ownership: Your relation to the trademark: Owner or Assignee.

The $199 fee seems a little steep at first, especially since you can register .com domains for $12/year and many other TLDs for much less than that (think .info, .net, .org, .us, .me, etc.). The Sunrise B registration, however, will block a third party from registering your trademarked name as a .XXX domain for 10 years, which comes to $19/year. This is definitely a bargain as general registration of .xxx domains will be approximately $99/year (at least for the first year). So, if you have a trademark, you should definitely consider taking advantage of the Sunrise B registration period over the next two weeks.

More info: GoDaddy.com

Quickly Register and Protect your Trademark / Brand on all Social Media Sites

Posted on July 25, 2011 by Tyson Snow

You have probably read tens if not hundreds of blog posts about the necessity of protecting your trademarks and brands online, particularly on social media sites. Indeed, numerous bloggers, lawyers, scholars, and others who fancy themselves experts (I probably fall into this last category despite the fact that I am far from an expert) have written about the need to protect your trademark / brand on various social media sites. I have even covered the issue here and presented on it here.

The significance of protecting trademarks and brands online cannot be overstated. And with new TLDs (Top Level Domains) becoming available, diligence in protecting you TMs and intellectual property becomes that more important. Check out this recent report from TechCrunch for some corroboration: Esther Dyson On New Top-Level Domains: “There Are Huge Trademark Issues.” I personally spend significant amounts of time chasing down trademark infringers and protecting the trademarks and service marks of existing clients. I have pulled numerous videos off of Youtube, taken down Twitter accounts, and taken over Facebook “Fan/Brand” pages on behalf of my clients. Whether it be “cease and desist” letters or full-blown federal court litigation, not a week goes by where I don’t run into another instance of infringement, cybersquatting, namesquatting, typosquatting, or illegal impersonation (see, e.g., this article on Twittersquatting – Impersonation and Infringement.

Obviously, the problem is serious. But rather than simply identify the problem, let me give you some practical advice. First, go check out http://namechk.com.

That site will allow you to quickly and easily:

Check to see if your desired username or vanity url is still available at dozens of popular Social Networking and Social Bookmarking websites. Promote your brand consistently by registering a username that is still available on the majority of the most popular sites.

Then register your name, brand, and trademarks. Beat those potential infringers to the punch (if you can).

Trademarkia, a great trademark resource (and a great Twitter follow @trademarkia) provides a similar Social Media Service.

Within seconds, you can scan hundreds of social media sites, determine where your brand or trademark is being used, and register brand or mark so that someone else cannot come in and take advantage of your company’s, business’s (or personal) good will. For a fee, Trademarkia will provide a host of additional services. But you can use both sites for free to do a quick search and begin registering and protecting what is rightfully yours. So, take a few minutes and start protecting your trademarks and brands on these social media sites. Time well spent.

If you have any additional suggestions, add them to the comments; if you have any questions, feel free to contact me.

Twittersquatting – The New Cybersquatting

Posted on January 13, 2011 by Tyson Snow

As you may know (okay, you most likely don’t know), I for cybersquatting cases. That’s right. Anticybersquatting Consumer Protection Act (“ACPA”) cases are some of the best litigation cases out there. Nothing like a good trademark infringement case that involves domain names. But recently I was contacted by Brandon Glenn from the MedCity News for an interview about a Twitter “name squatter” situation. Brandon wrote up a fine story: Twitter ‘name squatter’ victimizes Meridian Bioscience. Having read it, I looked back over my notes from the interview and thought that some of the information might be relevant here. Here is a quick summary of the information I provided to Brandon:

First, there are two types of accounts to be concerned with: (1) name-squatting (I call “impersonation” accounts); and (2) trademark infringement accounts (I call “trademark” accounts). The instructions for taking down an impersonation or trademark account on Twitter are straight forward and, to its credit, Twitter has done an excellent job of automating and simplifying the process. To get started, the user, whether an individual or company, should visit Twitter’s “Name Squatting Policy” page.

That page will send the user off in one of two directions: misuse based on impersonation or misuse based on trademark infringement. In each instance, after reading through Twitter’s explanation of what constitutes wrongful impersonation or trademark infringement, you will be given the option to submit a “ticket” in order to report the violation. Users should read through the policies so they understand what information Twitter will need in order to take down the account. As discussed below, this point is somewhat important.

An example of the trademark ticket is available at: http://support.twitter.com/forms/trademark

An example of the impersonation ticket is available at: http://support.twitter.com/forms/impersonation

If you have a valid trademark and it is being infringed (per Twitter’s policies), definitely use the trademark form; you will get a faster response. Twitter does not want any infringement taking place on its site. You will need, however, your trademark registration number, and the name of the trademark office you registered with (in the U.S., it will almost always be the USPTO).

In both instances (impersonation and trademark), there are certain criteria that must be met before Twitter will take down the account. For example, with respect to a trademark account:

When there is a clear intent to mislead others through the unauthorized use of a trademark, Twitter will suspend the account and notify the account holder. When we determine that an account appears to be confusing users, but is not purposefully passing itself off as the trademarked good or service, we give the account holder an opportunity to clear up any potential confusion. We may also release a username for the trademark holder’s active use.

Or with an impersonation account:

Twitter users are allowed to create parody, commentary, or fan accounts. Please refer to Twitter’s Parody Policy for more information about these accounts. Accounts with the clear intent to confuse or mislead may be permanently suspended.

All of these details are spelled out on Twitter’s policy pages, which the user will end up clicking through once they visit Twitter’s Name Squatting Policy. The policies are generally short, easy to understand, and, in most instances, you can tell right from the start whether the offending account is one that is worthy of being shut down.

One final thing to consider with respect to trademark accounts is whether you want to take down the account or whether you want to take over the account. As the rightful owner of a trademark, you might want to simply take over an account that has your trademark in its name. One of the initial questions in the trademark ticket form is whether you want to do this. I suggest doing this in cases where the account name itself is misleading.

Easy enough no? Much easier than a DMCA take-down notice. With the number of trademark infringement cases I do, it is easy to understand why Twitter is quick to respond on the trademark accounts. It does make me wonder whether “impersonation” will ever make its way into acts such as the ACPA. Maybe one of these days I’ll draft (or answer) a complaint that includes a cause of action for Twittersquatting in Violation of U.S.C. § ___. (And yes, I recognize that there are already causes of action for false light publicity and the like; but I’m looking for a Twittersquatting cause of action to go along with my Cybersquatting claims).