|
1
|
- Law Offices of Green & Green
|
|
2
|
- Bank Trademarks fall under Lanham Act
- Trademarks represent most of the Good Will of the Institution to the
Consumer.
- Internet Domain Names behave like Trademarks
- Domain Names 2002: Complexity & Success
- ICANN ADR
- ACPA in U.S. Courts
- Not All Domain Names are easy to Obtain & Keep
- First Amendment Plays major role
- Internet Changed the Rules and Playing field…
|
|
3
|
- Cases and ADR show Financial Institutions Usually can win marks
- Tendency for Banks to Use Generic Names
- First Savings Bank, F.S.B. V. First Bank System, Inc. (101 F.3d 645)
- Bank United v. BuildPro Communications (NAF)
- Reliance on non – Lanham Act approaches do not constitute rights to a
Trademark in U.S.
- Chase Manhattan Corporation et al. v. John Whitely (WIPO)
- And weakens the rights internationally
- Geographical Designations make weak Marks
- SOUTH Bank v. Media Street (WIPO)
- All businesses need to Register and Police…
|
|
4
|
- Searches of International Trademarks is a must if online:
- Along with Domain Name searches
- Before any money is spent
- Before a Campaign is Started
- Before Consumer Testing
- Following marks and repeating searches.
- Registration of “Good Marks”
- After some market testing
- Avoid descriptive wording
|
|
5
|
- Marks to be Registered should be Fanciful on a spectrum from “Xerox” to
“Photocopier”
|
|
6
|
- Domain Name is international but Trademark only viable in country where
it is registered. – No extraterritorial effect.
- Domain Names are all unique BUT FOR the TLD (the dotcom-dotnet-dotinfo)
- UN policy: Registered Trademark has most validity in disputes.
|
|
7
|
- Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy
- (1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the
Complainant has rights;
- (2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
- (3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar.
|
|
8
|
- Bank United Corp. and Bank United v. BuildPro Communications, REGISTERED
Trademark has strength.
- Respondent Buildpro builds web sites for others and cannot use “bank”
or enable any of its customers to use the word under State Law.
- Buildpro could ONLY use the BANKU Domain Name to foreclose the REAL
Bank United and enable its competitors
- CA FINANCIAL CODE § 3392, Corp Code § 201: unauthorized use of WORD
“Bank” IN BUSINESS NAME unless Commissioner of Financial Institutions approves.
- Seen as an illegitimate warehousing of the ONLY Domain Name
“BANKU.COM.” and thus in Bad Faith.
- Claim Number: FA0007000095158
-National Arbitration Forum, Sept 2000
|
|
9
|
- Do not Rely on a “dba” or Business License
- Financial Credit clearing service
use of “chasemerchantservices.com” even though it had a “right” under
county issued business license.
- Chase Manhattan was STRONG, OLD and a REGISTERED Trademark.
- Chase Manhattan Corporation et al. v. John Whitely Case No. D2000-0346
(WIPO June, 2000)
|
|
10
|
- Unlike The Bank U. case, South bank had not registered a Trademark and
mark is weak.
- Registration adds: Presumption of Ownership in U.S.
- Generic Words do NOT a strong mark make:
- South Bank is a business center in London
- Shows international nature of Domain Names
- Web developer had, therefore “legitimate” uses for “south bank.com”
- SOUTH Bank v. Media Street, Case No. D2001-0294 (WIPO, April, 2001)
|
|
11
|
- First Amendment Plays Role in U.S. Based cases.
- ADR in Domain Name cases
- Unusually large amount of “Stare Decisis” for ADR
- UDRP Shop for Arbitrator Panels Carefully
- Arbitrators can be arbitrary
- Use contract terms to specify Law and Details of ADR
- Jurisdiction via Internet A Major Factor in all Unfair Competition Cases
- Banks, Entertainers, All businesses fall under these rules.
|
|
12
|
- SUCKS websites may be legitimate comment, criticism
- Walmart stopped several BLATANT abuses
- Defamatory statements are protected
- Bihari could not stop blatant defamation
- NO 1st Amendment in UDRP – WIPO panel limits use: “The Panel
stresses that this decision does not address legitimate freedom of
expression sites others… characterize this decision as seeking to stifle
freedom of expression … by ordering the transfer of "sucks"
formative names. …this decision to serve[s] neither …aim. This decision
is directed to a blatant abuse of the domain name registration process
-- no more, no less.”
|
|
13
|
- Tricky Internet jurisdiction A Major Factor in all Unfair Competition
Cases:
- Cybersell:. WebPages alone Not “purposeful availment” of AZ business. 130
F.3d 414 (9th Cir. 1997).
- “Zippo Sliding Scale”: How much Contact / interactivity with customer
needed to have
jurisdiction. Zippo Manuf. Co. v. Zippo Dot Com. Inc. 952 F.
Supp. 1119, 1124 (W.D. Pa. 1996).
- “Effects” The traditional test: infringement aimed at the forum – Panavision
Int’l, v. Toeppen, 938 F. Supp. 616 (C.D. Cal. 1996)
|
|
14
|
- Domain Name Registrants have rights to use a name that suits their
legitimate needs and to express opinions. The law will continue to strike a
balance between conflicting rights.
- Right to warehouse Domain Name for future Sale
- Right to Express opinion [“Sucks” sites] Bihari Case
- Right to Comment on a Copyrighted Work
|
|
15
|
- Trademark is Source Designator
- Goodwill and Reputation are the represented by the Trademark & Logo
- Domain Names need Policing
- ICANN UDRP and ACPA can be used
- How to Brand: First Class Customer Service
|
|
16
|
- Dec. Action to Repair UDRP errors:
- 15 U.S.C. § 1114(2)(D)(v) – ACPA - Reactivation
- A civil action to establish
registration of a domain name is not unlawful injunctive relief to the
domain name registrant, including reactivation of the domain name or
transfer of the domain name to the domain name registrant.
- 28 U.S.C. § 2201 - Declaratory
Relief Actions
- For Declaration use of Domain Name is not unlawful
- SALLEN v. CORINTHIANS LICENCIAMENTOS LTDA No. 01-1197 U.S.C.A. 1st DIST MASS.
(Dec. 5, 2001)
- Overturned a UDRP-ICANN ADR Ruling to RETURN a Domain Name to a
registrant – former Respondent in the UDRP action.
- More Complexity and NEW gTLDs
- Intellectual property Audit to turn up potential marks
- Care in Searching all potential Marks
- Register in All Places Business Located + International
- Make them Registrable
- Obtain URLs early on
|
|
17
|
- Trademark Services are not enough
- CCH, Thomson & Thomson only can search, provide basic comparisons.
- Trademark Counsel can analyze, be part of in-house legal team.
- Much of my business from incomplete Trademark analysis, poor
applications for registration.
- Production company is not a “label” in the sense of printed tag.
- Applying mark to shirts is not “clothing” class.
|
|
18
|
- Register Trademarks
- Obtain All permutations of Domain Names
- “WellsFargo.com” Wells-Fargo.com, wellsfargo.net, etc.
- Select marks carefully IF they are also to become Domain Names
- Keep Litigation costs down – plan way ahead – do thorough searches
|
|
19
|
|
Notes