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          Trademarks and the Internet
               August 30, 2007

                 Presented by
    ACC’s Small Law Departments Committee
                     and




            Association of Corporate Counsel
                      www.acc.com
                               Panel                            Page 3




Oscar L. Alcantara, Moderator
Principal and Chair of IP Group, Goldberg Kohn,


Kelly M. Slavitt
Director of Legal Department and Corporate Counsel
The American Society for the Prevention of Cruelty to Animals


Robert Lands
Partner, Finers Stephens Innocent, London, England


Salvador K. Karottki, Senior Intellectual Property Counsel,
The Tribune Company




                                                                Page 4




         Brief Trademarks Review
   !   Designation of source
   !   Rights are based on use in commerce
   !   ® v. ™
   !   Legal test for infringement in likelihood of
       confusion
   !   Preserve rights by using consistently and
       policing use by others
                                                  Page 5




     Trademarks on the Internet

!   Make sure use is in commerce
!   Key word searching
!   Domain names
!   Metatags




                                                  Page 6




        IP Policing: Generally
!   Watch trade publications
!   Notifications from the public
    (members/supporters/etc.)
!   Set up Google alert to see how your
    trademark/name appears in the news
!   Search eBay, and use Vero program
!   Search the Internet for misuse of trademark
                                                       Page 7




              IP Policing: ASPCA
!   Use search engine (I like Google) to locate users of
    trademark on the Internet
!   Misuse of trademark: sites infringing the ASPCA
    trademark(s) to sell their goods/services; claim the
    ASPCA endorses their goods or services; they are
    the ASPCA’s top choice in X products, etc.
!   False claims of donations/support: sites claiming
    they are a supporter or donor to the ASPCA; sites
    claiming they send us a portion of the proceeds of
    sales on their website




                                                       Page 8



        IP Policing: ASPCA               (continued)

!   Owner of good/service v. owner of website
    v. distributor of good/service
!   Company name search - search engine,
    Secretary of State website, sec.gov
!   Owner of domain name
    www.networksolutions.com/whois/index.jsp
!   Owner of Trademark
    http://uspto.gov/main/trademarks.htm
                                                Page 9


             IP Policing:
    Sample Cease and Desist Letter




                                                Page 10




IP Policing: Litigation Alternatives

!   Destruction of materials bearing the mark
!   Covering the mark on existing packaging
!   Disclaimers
!   Ads to cure
!   Settlement Agreements
                                                           Page 11




     Infringement Using Metatags
!   Metatags
    ! Caselaw re: keyword ads and metatags evolving (see J.G.
      Wentworth v. Settlement Funding which found no
      confusion to consumers if resulting search results don’t
      display plaintiff’s trademarks)
    ! De minimus use
    ! Initial interest confusion
    ! View, Source in your browser




                                                           Page 12




Domain Names and ICANN
    ICANN
       gTLDs
         www.fsilaw.com
         www.fsi.law.pro
         www.fsilaw.mobi (Sponsored)
        Network Info Center: www.nic.[relevent gTLD]
       ccTLDs
           www.fsilaw.co.uk
                                     Page 13




    Domain Name Disputes
  Cybersquatting and typosquatting
  Competing legitimate interests
  Reverse domain name hijacking




                                     Page 14




Uniform Dispute Resolution
Procedure (UDRP)
  Binding Arbitration
  Faster and Cheaper than Court
  Informal and no Hearing
  Experts decide
  International
                                                 Page 15




The UDRP – Elements of a Claim
  Identical or confusingly similar trademark
  Holder has no rights or legitimate interests
  Domain name has been registered and is
  being used in bad faith




                                                 Page 16




The UDRP – Defending a Claim
  Use or preparations for use in connection
  with a bone fide offering of goods / services.
  Holder has been commonly known by the
  name even if no TM (“Nickname
  exception”).
  Making legitimate non-commercial or fair use
  of name without intent to tarnish TM or
  divert custom for gain.
                                             Page 17




The UDRP – Bringing a Claim
  World Intellectual Property Organisation
  (WIPO)
  The National Arbitration Forum (NAF)
  Asian Domain Name Dispute Resolution
  Centre (ADNDRC)




                                             Page 18




The UDRP – Bringing a Claim
  Complaint must be in hard copy and
  electronic format.
  Elect one or three person panel.
  Specify the TM on which the compliant
  based and the goods/services covered.
  Identify grounds of complaint in accordance
  with UDRP.
                                                Page 19




The UDRP – Fees (WIPO)
 Single panel member     Three member panel

1 – 5 Domains $1,500     1 – 5 Domains $4,000

 6 – 11 Domains $2,000   6 – 11 Domains $5,000

>12 Domains:             >12 Domains:
 Agree with WIPO          Agree with WIPO




                                                Page 20




The UDRP – Time Scales
  Fast track process for Cybersquatting cases.
  WIPO informs holder within 3 days of
  receiving complaint.
  Holder must file response within 20 days of
  commencement of the action.
  Panel appointed within 5 days of response.
  Average decision time: 40+ days.
                                                Page 21




The UDRP – Statistics
  Over 12,000 proceedings
  Research in 2004 (when 9,000 proceedings):
    Complaints won about 80% of the time
    1/3 of all proceedings unanswered (98% of these
    won by complainant)
  List of all proceedings and their status:
  www.icann.org/cgi-bin/udrp.cgi




                                                Page 22




UDRP – Top Tips
  Write First.
  Don’t offer to buy the name.
  Apply the Facts to the Rules not IP law.
  Pick a precedent or two.
                                                Page 23


        Trademarks as
     Keyword Search Terms
Overview: Advertiser purchases keywords to
generate website traffic
Two types of litigation:
   Trademark owner sues competitor
   Trademark owner sues search engine
Unsettled area: Is including trademark as a
keyword search term a “use in commerce?”
Ultimate Question: Is there any likelihood of
confusion?




                                                Page 24

         Trademarks as
      Keyword Search Terms
Trademark owner sues competitor
Edina Realty, Inc. v. The MLSOnline.com, 2006
WL 737064 (D.Minn. 2006)
  Defendant purchased the Plaintiff’s trademark as
  a keyword from both Google and Yahoo.
  Defendant's actions were a “use in commerce”
  since the search term was used to generate the
  sponsored link advertisement.
                                                         Page 25



          Trademarks as
       Keyword Search Terms
Merck 7 Co., Inc. V. Metriplan Health Consulting, Inc.,
425 F.Supp.2d 402 (SDNY 2006)
   No “use in commerce”
   “Defendants did not “place” the ZOCOR marks on any
   goods or containers or displays or associated documents
   nor do they use them in any way to indicate source of
   sponsorship. . . The ZOCOR mark is “used” only in the
   sense that a computer user’s search of the keyword
   “Zocor” will trigger the display of sponsored links to the
   defendants’ websites. This internal use of the mark
   “Zocor” as a key word to trigger the display of sponsored
   links is not use of the mark in a trademark sense.”




                                                         Page 26



          Trademarks as
       Keyword Search Terms
    Trademark owner sues search engine
    Courts are split on litigation against search
    engines
       WhenU.com Approach / Google Approach
                                                          Page 27


            Trademarks as
         Keyword Search Terms
WhenU.com distributes software program
that looks for matches between a computer
user’s web browsing activity and WhenU’s
own database.
When WhenU identifies a match, it triggers a
pop-up ad from an advertiser.




                                                          Page 28



         Trademarks as
      Keyword Search Terms
 U-Haul Int’l, Inc. v. WhenU.com, Inc., 279 F.Supp. 2d
 723, 725-26 (E.D. Va. 2003) and I-800 Contacts, Inc.
 v. WhenU.com, 414 F.3d 400, 403 (2d Cir. 2005)
    A company’s internal utilization of a trademark in a way
    that does not communicate it to the public is analogous
    to a individual’s private thoughts about a trademark.
    Such conduct simply does not violate the Lanham Act,
    which is concerned with the use of trademarks in
    connection with the sale of goods or services in a manner
    likely to lead to consumer confusion as to the source of
    such goods or services
                                                           Page 29



     Trademarks as
  Keyword Search Terms
GEICO v. Google, Inc., 330 F.Supp.2d 700 (E.D. Va
2004); GEICO v. Google, Inc., 2005 WL 1903128
(E.D. Va 2005)
   Google’s ad program does “use” GEICO’s mark for
   purposes of the Lanham Act
   Use of marks as invisible “computer coding” is a Lanham
   Act use because it was “in commerce” and “in
   connection with the sale, offering for sale, distribution, or
   advertising of goods and services.”




                                                           Page 30


         Trademarks as
      Keyword Search Terms
GEICO v. Google, Inc.
Plaintiff must further prove that disputed use
results in a likelihood of confusion.
  Where mark is used only in coding and did not
  appear in the search result headings, there is no
  infringement.
  There is a likelihood of confusion in instances
  where GEICO’s trademark appeared in the
  heading or text of the AdWord Results.
                                                                    Page 31



                     Gripe Sites
A gripe site is a web site established to criticize a corporation.
By 1999, there was a gripe site directed at more than half of Fortune 1000
companies.
In 2005, Forbes.com rated the 10 Top Corporate Web Sites.
Most gripe sites incorporate the company’s name in the domain name of
the site and incorporate the company’s name and logo in the content of
the site.
Some gripe sites will alter the logo, i.e. “Starbucks Sucks” from
“Starbucks Coffee” or it will display the company’s mark with a
derogatory term next to it.




                                                                    Page 32




                    Gripe Sites
Most common claims brought against gripe
sites:
    Trademark Infringement
    Trademark Dilution
    Cybersquatting
                                                                                Page 33




                          Gripe Sites
     Did Defendant use the trademark in commerce?
         This is the biggest hurdle in Lanham Act cases
         Is the site selling anything?
         Does the site contain links to other web pages that are
         selling goods or services?
         Is the site soliciting funds for non-profit activity
     Did Defendant use trademark in a way that is likely
     to cause confusion?
         Trademark.com site is more vulnerable to this issue than
         trademarksucks.com site




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