Archive for the ‘Domain Names’ Category

LWH Scores Another Success Against Domainer

Tuesday, September 30th, 2014

domains Lipton, Weinberger & Husick (“LWH”) recently scored another success against domainer, Marchex, Inc.¬† Here’s some background.

Domainers – those who speculate in domain names – set up web sites for purposes of selling a domain or obtaining pay-per-click revenues. When the domain is identical or similar to another company’s trademark, trademark owners will attempt to enforce their rights.¬† Some of the larger domainers are willing to accept push back from trademark owners as the cost of doing business.¬† Once such domainer, Marchex, Inc. (“Marchex”), which sells domains from its considerably large portfolio through its Archeo Domains Marketplace, concedes in its corporate filings that defending trademark disputes is part of its business.

Some years ago, LWH won a case against Marchex on behalf of its client, Superior Play Systems¬† (“SPS”).¬† SPS’ goal was to obtain the domain name from Marchex.¬† The key to prevailing in that case was that SPS was using SUPERIOR PLAY SYSTEMS as a common law trademark years before Marchex acquired the domain.¬† Had Marchex performed a simple Internet search before registering its domain, it would have learned that it was identical to another companies’ trademark.¬† That was a good enough reason for the arbitrators to order Marchex to transfer the domain name to its rightful owner, Superior Play Systems (NAB Claim No. FA1103001379684).

This month, LWH had another success against Marchex.¬† In this case, like the Superior Play Systems situation, Marchex apparently purchased the “” domain name during the same period that our client, BeQuick Software, Inc. (“BeQuick”), was already using BEQUICK as a common law trademark.¬† Rather than litigate, BeQuick decided to purchase from Marchex.¬† A series of purchase offers were made, culminating in an offer of $12,500, which BeQuick justified to Marchex as similar if not in excess of other sales of similar domain names.¬† Marchex rebuffed the offer, ignored the justification, and refused to counter offer.¬† Holding out for high five figures, Marchex invited BeQuick to make yet another offer.¬† Rather than continue to bid against itself, BeQuick authorized LWH to reclaim its domain name by filing a Uniform Domain Name Dispute Resolution Policy (“UDRP”) complaint against Marchex with the National Arbitration Forum.¬† Once the complaint was filed, Marchex quickly settled and BeQuick obtained its domain name.¬† You can review the complaint here.

Despite these successes, domainers often prevail because owning a domain name — even if it is similar to another company’s trademark — is not necessarily infringement or constitute “bad faith” under UDRP precedents.¬† Domainers have created very successful businesses selling domains and parking them for pay-per-click revenue.¬† Under the right circumstances, however, when a domainer acquires a domain without due diligence, exercises bad faith in the sales process, or creates confusion in the market place, a trademark owner may have a good shot at reclaiming its domain.

Adam G. Garson, Esq.

New gTLD’s … New Burdens

Sunday, March 30th, 2014

domains You may recall that we reported about “one of the biggest changes in the Domain Name System” was about to be implemented by ICANN, which was introducing hundreds of new top level domains that could “end with almost any word in any language.”¬† So, instead of such dependable and familiar domains like “” and “”, you could have “” or “”¬† Pretty cool, right?¬† Well, maybe not so much for trademark owners.

The roll out of the new domains has been slow-paced, however, as registrars come on line with the new domains (after paying hefty application and registration fees) some trademark experts worry that the explosion of top level domains places too much burden on brand owners to police their marks and purchase unwanted domains for the sole purpose of keeping them out of the hands of would-be cyber squatters and infringers.¬† Francis Gurry, the head of the World Intellectual Property Organization (WIPO), is on record of stating that the impact upon trademark protection is “likely to be significant and disruptive.”¬†¬† quoted Gurry:

‘The opportunity for misuse of trademarks expands exponentially,’ said Gurry, noting that registering a domain name is a cheap, automatic procedure that takes a matter of seconds and does not have a filter to examine whether there is a trademark conflict.

According to the same article, in 2013, 2,585 cases involving 6,191 domains were were filed with WIPO, which is one of the arbiters in charge of domain disputes.¬† It is currently hearing its first case concerning a new gTLD in which a German company, Canyon Bicycles GmbH, is objecting to a Dutch registrant of¬† The German company is a worldwide distributor of bicycle products and is involved in numerous international cycling events.¬† The registrant of the domain is an individual based in the Netherlands who states that he is a cyclist and web designer in the cycling industry. The disputed domain name points to a website parking page provided by the Registrar which, according to the screenshot provided by the Center, features sponsored listings including one entitled “Mountainbikes”.¬† To learn more about the case visit WIPO’s website.

This case may foreshadow many more similar disputes.¬† We’ll keep you posted.

— Adam G. Garson, Esq.

LWH Reclaims Domain Name from Marchex Sales

Wednesday, June 29th, 2011

domainsYour trademarks are among your company’s most valuable assets; controlling them is a necessity for successful branding.¬† Domain names, particularly if they incorporate your trademarks, are part of your intellectual property portfolio and demand as much attention as your other assets.

Sometimes, through no fault of your own,¬† another company owns a domain name, which flatly infringes your trademark.¬† Such was the case with a client who recently retained Adam Garson of Lipton, Weinberger & Husick to reclaim a domain name from Marchex Sales, Inc. (Marchex), a public company in the business of acquiring huge portfolios of domains for Internet marketing.¬† It owns such domains as,,, and¬† Marchex was running a website using our client’s trademark as its domain name.¬† The web site contained various links to related goods and services including our client’s competitors.

Our client’s trademark, which cannot be disclosed here for confidentiality reasons, was only recently registered with United States Patent and Trademark Office.¬† Nevertheless, it had been using the mark since the 1990’s and could prove continuous use until the present.

To rescue our client’s domain name, LWH filed an administrative action with the National Arbitration Forum (NAF) under the Uniform Domain-Name Dispute Resolution Policy (UDRP).¬† The UDRP is a procedure sanctioned by the Internet Corporation for Assigned Names and Numbers and is available to anyone who has a domain name dispute.¬† The UDRP may be used to obtain an order directing a domain’s registrar to transfer the domain to its rightful owner.

To succeed, the plaintiff — in this case our client — is required to prove the following:

(i) its domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) it has no rights or legitimate interests in respect of the domain name; and

(iii) its domain name has been registered and is being used in bad faith.

The process involves eight steps, from filing a complaint to final review.¬† In our situation, it took 60 days after filing the complaint for the NAF to render an opinion.¬† The panel found in favor of our client on all three counts.¬† Marchex, the Respondent, argued that at the time it acquired the domain name, our client possessed no trademark rights because the trademark was generic and descriptive.¬† The Panel rejected that argument.¬† Here’s a sample from the panel’s 24-page opinion:

Complainant’s uncontested relevant evidence presented in support of Complainant’s having timely common law trademark rights in the at-issue mark are sufficient to demonstrate secondary meaning and overcome any presumption that the … mark is generic notwithstanding that each of the component words may be generic when taken discretely.

Respondent takes no steps to avoid holding or using trademarked domain names when it would be a simple matter to screen domain names prior to registration or acquisition to determine if they contain registered trademarks or marks in which there is likely a claim of rights such as the … mark.¬† With even less trouble the Respondent might, after finding out that a trademarked domain name such as Complainant’s was registered as a domain name, cancel the trademarked domain name or voluntarily transfer registration, rather than link it do the mark holder’s competition.


It thus seems disingenuous for Respondent to claim it acquires domains because of the target domain name’s descriptive value. And even if Respondent’s motivation is as stated, the fact that Respondent cares not that it also is acquiring trademarked names is troubling and further calls into question the bona fide nature of Respondent’s endeavors….Registrants of large numbers of domain names or those acquiring domain names in bulk must be particularly careful in respect of the rights of third parties.

The case demonstrates that trademark owners who can establish common law trademark rights can prevail against large corporations even when the odds do not seem particularly favorable.  Let us know if we can assist you with your efforts at reclaiming your trademarks and domain names.

— Adam G. Garson, Esq.

ICAAN Changes the Web!

Wednesday, June 29th, 2011

ICANNIt is not an understatement to suggest that the Internet Corporation for Assigned Names and Numbers’ (ICANN) new plan to increase the number of top level domains is one of the biggest changes to the Domain Name System since it was founded.¬†¬† Top Level Domains (gTLDs) are those domain names at the the highest level of the Internet’s hierarchical domain name system.

Evolution of the domain naming system has been slow relative to changes in Internet technology. In the 1980s, only seven gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org) existed and in the following years, ICANN slowly added new domains such as .biz, .info, .name, .pro and so on.¬† More recently, a .xxx was added, totaling 22 top level domains.¬†¬† Now all that has changed.¬† On June June 20, 2011, ICANN’s board voted to permit top level domain names to “end with almost any word in any language, offering organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways.”¬† ICANN’s description of the new changes were nothing less than ecstatic.¬† Here’s a sample:

ICANN has opened the Internet’s naming system to unleash the global human imagination. Today’s decision respects the rights of groups to create new Top Level Domains in any language or script. We hope this allows the domain name system to better serve all of mankind,” said Rod Beckstrom, President and Chief Executive Officer of ICANN.

Today’s decision will usher in a new Internet age,” said Peter Dengate Thrush, Chairman of ICANN’s Board of Directors. “We have provided a platform for the next generation of creativity and inspiration.

Getting one of those new names is not going to be simple or inexpensive.¬† First, there will be an extensive evaluation period for each applicant and second, there will be some hefty fees.¬† The proposed evaluation fee will be $185,000 plus a $25,000 annual maintenance fee.¬† Without a doubt, the big players in the branding world will be quick to take advantage of the new system.¬† Expect to see domain names like or¬†¬† Clearly, the advantage of the new naming system for small businesses will be few. If you’re interested in the details, here is a link to ICANN’s guidebook to the new gTLD system. You’ll want to monitor ICANN’s web site because the new gTLD’s will only be offered during a set period of time with later rounds at future dates.¬† Click here for the fact sheet.

— Adam G. Garson, Esq.