Cyberbanking 2002:
“Banking” On Domain Names

Law Offices of Green & Green

The Importance of Trademarks

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…

Weak and Strong Marks

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…

Care in Mark Selection

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

Fanciful to Descriptive

Marks to be Registered should be Fanciful on a spectrum from “Xerox” to “Photocopier”

Relationship Between Trademark and Domain Names

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.

UDRP Domain Name Disputes

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.

“Thank You Bank U.”

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

Chase Manhattan

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)

SOUTH Bank v. Media Street

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)

Complexity Continues

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.

First Amendment Plays Role in U.S. Based cases.

SUCKS websites may be legitimate comment, criticism

Walmart stopped several BLATANT abuses

Defamatory statements are protected

Bihari could not stop blatant defamation

NO 1^st 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.”

Jurisdiction under Lanham Act

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)

Domain Name Registrants Rights

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

Branding

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

The Future

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. 1^st 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

Use Quality Trademark Services

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.

Bottom Lines:

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

Slide 19


	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…


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…


	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


	Marks to be Registered should be Fanciful on a spectrum from “Xerox” to “Photocopier”


	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.


	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.


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


	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)


	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)


	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.


	SUCKS websites may be legitimate comment, criticism
		Walmart stopped several BLATANT abuses
	Defamatory statements are protected
		Bihari could not stop blatant defamation
	NO 1^st 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.”


	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)


	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


	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


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. 1^st 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


	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.


	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