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What It Takes to Prove Common Law Rights in UDRP Complaints

The Uniform Domain Name Dispute Resolution Policy now has seventeen years of history. A high percentage of disputes are indefensible and generally undefended. As the history lengthens, early registrants of dictionary word-, common phrase-, and arbitrary letter-domain names have been increasing challenged in two circumstances, namely by businesses who claim to have used the unregistered terms before respondents registered them and later by emerging businesses with no history prior to the registrations of the domain names. I have discussed the latter in earlier essays. Some examples from recently decided cases of the former include “gabs” (the only recent dictionary word case); phrases include “Gotham construction,” “Minute Clinic,” “Stage Coach,” and “Desert Trip” and for random letters (acronyms to complainants) “atc” and other three-character domains. Some of these second level domains are discussed further below. Claiming unregistered rights is a recurring motif, important because it affects whether complainants have standing, discussed in an earlier essay, UDRP Standing: Proving Unregistered Trademark Rights).

Typical complainant allegations of common law rights confess they never registered their marks but their priority in the marketplace ought nevertheless to support abusive registration of the corresponding domain names. However, as a general rule complainants alleging common law rights have to work harder to overcome the distance of time. To prevail in a UDRP proceeding parties have to be alert to their evidentiary demands. When a complainant alleges priority in using a mark currently being exploited by a respondent arguably violating its representations and warranties, it has to prove “reputation in and public recognition of the trademark” prior to the registration of the domain name (the now versus then burden). The quotation comes from the Gotham construction case, Joel I. Picket v. Niyazi Palay / Gotham Constructions, FA1702001717501 (Forum April 10, 2017). Put another way—Stacy Hinojosa v. Tulip Trading Company, FA1704001725398 (Forum May 24, 2017) (<stacyplays.com>):

[A] date of first use alone is not enough to establish common law rights in a mark. In order to have common law rights, a complainant must establish secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder.”

The underlying rationale is simple: if prior to the registration of the domain name the unregistered mark had no reputation, it follows respondent could not have registered the domain name in bad faith. It’s worse for a complainant who had no reputation in the past, and has none now! But these failures are frequently traceable to complainants not understanding what has to be proved, and argued by pro se disputants.

The term “rights” in paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy — “[the] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” — encompasses unregistered as well as registered rights but whereas a complainant with a registered mark by definition has a “right” complainant with an unregistered right has to prove something more than simple priority. It may indeed have had a market presence, but who knew about it? This is the kind of knowledge only a complainant would have, and if it doesn’t have (or doesn’t offer) documented proof it will be read negatively that silence means there is no proof to offer; and if there is no proof, it loses.

It has been said that Panels generally “approach[] the issue of proof of [unregistered] trademark ‘rights’ … in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning.” NJRentAScooter v. AM Business Solutions LLC, FA0909001284557 (Nat. Arb. Forum November 4, 2009). However, “slightly more relaxed” has to be understood in a relative sense. The weaker the mark, the greater the burden of proof.

A sufficient body of precedent has built up to form the consensus noted in the WIPO Overview at Paragraph 1.7.: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” This black letter statement of the law does not expressly include the “reputation, ” but it is necessarily implied.

The “relaxed manner” finds particular expression in claims by personalities (in sports, motion pictures, publishing, entertainment, etc.) who are widely known or have achieved fame in their fields. An example is Halle”Berry and Bellah Brands Incorporated v. Alberta Hot Rods, D2016-0256 (WIPO March 15, 2016) (). The Panel “consider[ed] it reasonable to infer that the Respondent was aware of the Complainants’ rights in the common law trademark HALLE BERRY when registering the disputed domain name in 1997, given Ms. Berry’s fame and the substantial goodwill which she had generated in her personal name by that date, commencing in the mid-1980s.” The Panel draws a similar conclusion in Jeffree Star and Jeffree Star Cosmetics LLC v. Lisa Katz / Domain Protection LLC, FA1607001682277 (Forum August 10, 2016) (jeffreestar.com> Transferred); and more recently in Carl Cartee v. Stanley Bell, FA1703001724616 (Forum May 8. 2017) (<carlcartee.com>), but not in Stacy Hinojosa for the reasons already mentioned.

While marks claimed by personalities are on the strong end of the scale, common phrases and dictionary words are on the weak end. Complacency is fatal in claims for weak marks. GOTHAM CONSTRUCTION is hardly in the stratosphere of protected marks! In that case, the Panel pointed out that Complainant “proceeds on the belief that in law, the essential element in the establishment of common law rights is proof of first adoption. It is not. Rather, common law rights are premised upon proof of reputation in and public recognition of the trademark.” It’s very possible Complainant was the first to use the term but that does not prove Respondent registered it for its non-trademark value.

There are of course always dictionary words that ascend to the stratosphere, APPLE, VIRGIN, PRUDENTIAL, ENTERPRISE, and EASY (not an exhaustive list) but they have proved themselves in the market. That is not true of CURVAGE. In Jason Johnson v. Ramesh Mahadevan, FA1704001727694 (Forum May 17, 2017) Complainant asserted it had common law rights in its CURVAGE mark — “[and claimed it had] consistently used the mark since 2007” — but there is contradictory evidence in the record. Complainant could not have consistently used the mark because the prior owner of the business denied it:

Its (sic) pretty obvious to everyone that Ive (sic) basically ignored this site for the last year. Truth be told, I lost my interest long before then. I feel Curvage will continue to languish from my lack of attention paid to it… Ive (sic) got basically two choices: 1. Treat Curvage like a business. This would mean ads and doing things to attract more traffic. 2. Have someone else take it over. Im (sic) leaning strongly towards the latter. Is there anyone interested?

Secondary meaning cannot be established without proving 1) continuous and uninterrupted use in commerce; and 2) reputation predating the registration of the domain name. In DealerX v. Gurri Kahlon, ROiQ.com, D2017-0488 (WIPO May 4, 2017) Complainant “alleges it has used the ROIQ mark in interstate commerce since 2007, but provides no factual support for this claim. Instead, it contradicts the claim by submitting the only evidence relating to Complainant’s use — the U.S. Registration for the ROIQ trademark — which claims first use in commerce on November 2013.” Sunk by its admission!

Prevailing presupposes the right palette of facts properly and persuasively laid out — Leslie Brown v. Peter Auger / adnetagency, FA1703001723736 (Forum May 1, 2017) (<headshopfinder.net>) and CVS Pharmacy, Inc. and MinuteClinic, L.L.C v. Pham Dinh Nhut, FA1703001723633 (Forum April 30, 2017) (MINUTE CLINIC and <minuteclinics.com>) — but insufficient if there is no supporting proof with the allegations ATC Group Services LLC v. BatchMaster Software, Inc., FA1703001722646 (Forum May 15, 2017) (<atc.com>).

In Leslie Brown, Complainant proved its common law right by providing “evidence that its website has had nearly 43 million page views for <headshopfinder.com>, and from this the Panel inferred (Respondent not having appeared) that Respondent “had actual knowledge because the disputed domain name is identical to Complainant’s mark and Respondent’s resolving webpage offers identical services to Complainant’s webpage.”

The ATC Group Services case is one of those decisions that should be on every parties’ study list. I say this for two reasons: first, the skill with which Respondent’s counsel marshaled the evidence; and second, the Panel’s reasoning in dismissing the complaint. As to the latter (which incorporates Respondent’s counsel’s analysis), while Complainant “submitted proof of use of the letters ATC as part of various corporate names [it submitted] no proof of use of ATC as a trademark brand, let alone sufficient proof of secondary meaning.” Further, “[n]o proof has been submitted establishing how ATC has been used as a trademark by Complainant, the advertising revenue incurred to promote the ATC brand, or the extent to which the ATC brand is associated with Complainant by the relevant public community.

All these decisions (even those I’ve noted only in passing) share some common features. Prevailing parties have organized their evidence to prove their contentions. This generally requires professional assistance; certainly without counsel, parties (I mean on both sides of the caption) lose.

Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

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Registered Your DMCA Contact Address Yet?

It is not much of an exaggeration to say that the Digital Millenium Copyright Act of 1998 makes the Internet as we know it possible. The DMCA created a safe harbor that protects online service providers from copyright suits so long as they follow the DMCA rules.

One of the rules is that the provider has to register with the Copyright Office to designate an agent to whom copyright complaints can be sent. The original process was rather klunky; send in a paper form that they scan into their database, along with a check. This year there is a new online system, and as of December, they will no longer provide the old paper database. So if you are a provider (run web servers, for example) and want to take advantage of the safe harbor, you have to register or re-register.

Fortunately, the process is pretty simple. You visit the new DMCA site at https://dmca.copyright.gov/, click Registration Account Login at the upper right, then the “register here” link on the login page. Then you set up an account with yourself as a primary contact, and if you want, a secondary contact. It sends a confirmation message to the e-mail you provide, and once you click the link, you have an account. Then you log in and add a service provider which will generally be you or your company, and a designated agent which will generally also be you. Then you add all the names by which someone might look for your company, which can include your business name, any other names your business uses, and all the domain names you use. There is as far as I can tell, no limit to the number of alternate names, so be comprehensive. Then you pay $6 by credit card, and you’re done. If you later want to make changes, such as adding new alternate names, that’s another $6 so take a few minutes and think of them all before pushing the pay button.

After three years they will send you a reminder to renew, which will cost another $6. When the Copyright Office set up the new process, there was a certain amount of grousing that the old registrations were allegedly permanent while the new registrations have to be renewed every three years. While there is some merit to this complaint, it must be noted that the old registrations cost $140 while the new ones are $6, so if your business lasts for less than 70 years, the new scheme is cheaper.

For six bucks, it’s cheap insurance against even unlikely copyright suits.

Written by John Levine, Author, Consultant & Speaker

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Balancing Rights: Mark Owners, Emergent Businesses, and Investors

Is there any act more primary than naming? It comes before all else and makes possible what follows. For the most part, names are drawn from cultural assets: collections of words, geographic locations, family names, etc. They can be valuable, which is why they are guarded, protected, and hoarded. The balancing of rights among those competing for names is a deliberate feature of the Uniform Domain Name Dispute Resolution Policy (UDRP). The jurisprudence is “concerned [quoting from WIPO Final Report at paragraph 13] with defining the boundary between unfair and unjustified appropriation of another’s intellectual creations or business identifiers.”

While businesses have statutory protection for the names, they use to identify themselves in the marketplace their choices of dictionary words and common expressions (excluding coined words) are nonexclusive. So for example “Prudential,” “United,” and “American” (to take the most obvious) are shared by many companies in different Classes. Coined words such as Google stand apart. Although it may be said (in a colloquial sense) that dictionary word-marks are “owned”, it can never be equated with owning the grammatical constituents from which they are composed. (Virgin Enterprises and Easy Group have no monopoly on the dictionary words “virgin” and “easy” although they and other companies with long and/or deep presences in their marketplaces have been particularly successful in shutting down any use of their dictionary word-marks (combined or not with other grammatical elements) as domain names.)

This sharing of names under the trademark system works because each of the sharers operates in and is confined to Classes that define the metes and bounds of their rights. (Non-shared marks higher on the classification scale can also be lawfully used in combination with other words in both the actual and virtual marketplaces (noted below), so they too are not entirely exclusive.)

Since the Internet is class-less and there are no gatekeepers (as there are in obtaining trademarks), complainants are put to the test of proving breach of registrants’ warranties and representations. It is not sufficient merely to show that domain names are identical or confusingly similar to marks in which complainants have rights. For all the successes of major brands in policing their marks, it is not unlawful to register dictionary words or letters as domain names as long as there is no intention to take advantage of or traffic in already established marks.

Just as “sharing” names in commerce is balanced by protecting those with priority of use, so are there tests of rights under the UDRP. Basic to this assessment is a recognition that “[i]n the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002).

The boundary that defines “small differences” has been tested in a variety of factual circumstances: dictionary words (<gabs.com> and <reformation.com> and common expressions (such as <orderyour oil.com>) as well as defenses based on nominative fair use or similar concepts under other legal traditions such as “valid and honest competition” discussed below in Franke Technology and Trademark Ltd v. hakan gUlsoy, CAC 101464 (ADR.eu May 11, 2017). The Panel in Gabs S.r.l. v. DOMAIN ADMINISTRATOR — NAME ADMINISTRATION INC. (BVI), CAC 101331 (ADReu February 26, 2017) found that “[t]he word ‘gabs’ is a common English word based on ‘gab’, meaning ‘talk, prattle, twaddle’ (Concise Oxford Dictionary) and it is used to invoke notions such as ‘the gift of the gab’ and in colloquial words such as ‘gabfest’ and ‘gabble'”. It does not strain the language at all to accept that it is used interchangeably as a verb, as in ‘talks’ or ‘prattles.'” Even if the Complainant proved it had priority, it would have nothing to complain about (“the proceeding should never have been brought”) because Respondent is not in competition with it and is using a dictionary word for its commonly understood meaning.

In Franke Technology the Panel noted that “no trademark owner (in the EU) . . . has the right to monopolise the servicing or repair or resale (of previously sold) of its products . . . [where another is using the mark to] promote valid and honest competition” citing ECJ_BMW_v_Deenik, C-63/97 (European Court of Justice, 3 December 1998) for the proposition that “the proprietor of a trade mark [is not entitled[ to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark.”) To be a lawful registration under the UDRP respondents (unauthorized service providers) must meet the test under Oki Data Americas, Inc. v. ASD, Inc, D2001-0903 (WIPO November 6, 2001) (also cited in Franke Technology).

Crossing the boundary (the metes and bounds that define a complainant’s rights) is assessed abusive by proof and not by assertion. This principle can be unforgiving.

An example of this is the decision in The Dow Chemical Company and E. I. du Pont de Nemours and Company v. Jung Chang Seap, D2016-0596 (WIPO July 13, 2016) (). The Panel held that “DuPont’s rights to DUPONT cannot be reasonably expanded to cover uses of DU alone, a term that can also be viewed as a simple French article. Further, there is no evidence that would suggest that DUPONT is commonly abbreviated or referred to as DU alone.”

However one may feel about the holding in Dow Chemical (it has not to my knowledge been challenged in an ACPA action, and there is no evidence of trademark infringement) it exemplifies how the balancing is applied. Complainant has no trademark for “du”, and it has no right to monopolize “chemical.” In contrast to the Dow Chemical case, there are cases in which complainants are known equally by full as by abbreviated acronymic marks, such as GENERAL ELECTRIC and GE. General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, D2000-0452 (WIPO July 10, 2000) (<generalelectric.org> and <gewarehouse.com>). The defaulting Respondent is found infringing, and Complainant prevails not because Respondent defaults but because there could be no conceivable explanation for registering domain names identical to Complainant’s marks.

Unlike trademark law which precludes competitors from employing an identical mark to one used by another with an earlier presence in the market, under domain name law respondents in the same industry as complainants using dictionary words or common expressions as their monikers (absent proof of direct and knowing competition) can co-exist even though respondent would be unable to get a trademark. Assuming the proper alignment of facts respondents may have rights or legitimate interests to their domain names even though they would be unable to obtain a trademark for the same or similar grammatical constituents. This is illustrated in two recent cases that by happenstance are in the building cleaning area, Anyclean Premium Limited v. Jethro Denahy, Any-Clean, D2017-0581 (WIPO April 28, 2017) (ANY CLEAN and <any-clean.com>) and City Wide Franchise Company, Inc. v. Cheri Quillen / City Wide Janitorial Services, LLC, Claim Number: FA1703001723195 (Forum April 30, 2017) (CITY WIDE and <citywideok.com> the “ok” is for Oklahoma).

In Anyclean Premium, the Panel noted that “the term ‘any-clean’ comprise two ordinary English words, any’ and ‘clean’. The Panel considers these could readily be independently derived by a person establishing a cleaning business and sees no reason to doubt the Respondent’s account that this is what he did before he had any knowledge of the Complainant, still less of any dispute. The Panel in City Wide similarly concluded that “it is more probable that Respondent, first, did not register or use the domain name with the intention of selling it to Complainant, but rather with the intention of using it for its own business that it was already conducting.”

Terms composed of common elements are by definition drawn from the public domain; it is how these terms are employed that determines violation of the UDRP and ACPA. If there is targeting, it must be demonstrated, not simply alleged. In other words, the balancing is achieved by assessing the totality of facts presented by the parties; it is up to the parties to make their case. In Anyclean, the Panel found that “the words ‘any’ and ‘clean’ are descriptive when applied to a cleaning business, and in such circumstances the Complainant would need to establish by credible evidence details of it having a significant reputation in those terms before the Panel would be prepared to draw inferences adverse to the Respondent. It has not done so.”

The takeaway from these kinds of disputes is that as between marks and domain names there can lawfully be correspondence (confusingly similar if not identical) even if the respondent would be barred from obtaining a trademark. Complainant has the burden of demonstrating the balance tips in its favor.

These evidentiary demands explain the absolute necessity for parties (if they make their case) to fully develop the factual circumstances. Complainants are favored when there is sufficient evidence to conclude that the terms are registered for their trademark values; it favors respondents when the uses indicate otherwise. Unless complainant’s proof reaches 51% persuasiveness (a preponderance of the evidence or more probable than not standard), it cannot prevail. Respondents don’t have to do anything. But, if the 51% threshold is achievable to avoid forfeiture respondents must themselves offer rebuttal evidence (same standard) sufficient to prevent complainant from crossing the threshold.

Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

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Balancing Rights: Mark Owners, Emergent Businesses, and Investors

Is there any act more primary than naming? It comes before all else and makes possible what follows. For the most part, names are drawn from cultural assets: collections of words, geographic locations, family names, etc. They can be valuable, which is why they are guarded, protected, and hoarded. The balancing of rights among those competing for names is a deliberate feature of the Uniform Domain Name Dispute Resolution Policy (UDRP). The jurisprudence is “concerned [quoting from WIPO Final Report at paragraph 13] with defining the boundary between unfair and unjustified appropriation of another’s intellectual creations or business identifiers.”

While businesses have statutory protection for the names, they use to identify themselves in the marketplace their choices of dictionary words and common expressions (excluding coined words) are nonexclusive. So for example “Prudential,” “United,” and “American” (to take the most obvious) are shared by many companies in different Classes. Coined words such as Google stand apart. Although it may be said (in a colloquial sense) that dictionary word-marks are “owned”, it can never be equated with owning the grammatical constituents from which they are composed. (Virgin Enterprises and Easy Group have no monopoly on the dictionary words “virgin” and “easy” although they and other companies with long and/or deep presences in their marketplaces have been particularly successful in shutting down any use of their dictionary word-marks (combined or not with other grammatical elements) as domain names.)

This sharing of names under the trademark system works because each of the sharers operates in and is confined to Classes that define the metes and bounds of their rights. (Non-shared marks higher on the classification scale can also be lawfully used in combination with other words in both the actual and virtual marketplaces (noted below), so they too are not entirely exclusive.)

Since the Internet is class-less and there are no gatekeepers (as there are in obtaining trademarks), complainants are put to the test of proving breach of registrants’ warranties and representations. It is not sufficient merely to show that domain names are identical or confusingly similar to marks in which complainants have rights. For all the successes of major brands in policing their marks, it is not unlawful to register dictionary words or letters as domain names as long as there is no intention to take advantage of or traffic in already established marks.

Just as “sharing” names in commerce is balanced by protecting those with priority of use, so are there tests of rights under the UDRP. Basic to this assessment is a recognition that “[i]n the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002).

The boundary that defines “small differences” has been tested in a variety of factual circumstances: dictionary words (<gabs.com> and <reformation.com> and common expressions (such as <orderyour oil.com>) as well as defenses based on nominative fair use or similar concepts under other legal traditions such as “valid and honest competition” discussed below in Franke Technology and Trademark Ltd v. hakan gUlsoy, CAC 101464 (ADR.eu May 11, 2017). The Panel in Gabs S.r.l. v. DOMAIN ADMINISTRATOR — NAME ADMINISTRATION INC. (BVI), CAC 101331 (ADReu February 26, 2017) found that “[t]he word ‘gabs’ is a common English word based on ‘gab’, meaning ‘talk, prattle, twaddle’ (Concise Oxford Dictionary) and it is used to invoke notions such as ‘the gift of the gab’ and in colloquial words such as ‘gabfest’ and ‘gabble'”. It does not strain the language at all to accept that it is used interchangeably as a verb, as in ‘talks’ or ‘prattles.'” Even if the Complainant proved it had priority, it would have nothing to complain about (“the proceeding should never have been brought”) because Respondent is not in competition with it and is using a dictionary word for its commonly understood meaning.

In Franke Technology the Panel noted that “no trademark owner (in the EU) . . . has the right to monopolise the servicing or repair or resale (of previously sold) of its products . . . [where another is using the mark to] promote valid and honest competition” citing ECJ_BMW_v_Deenik, C-63/97 (European Court of Justice, 3 December 1998) for the proposition that “the proprietor of a trade mark [is not entitled[ to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark.”) To be a lawful registration under the UDRP respondents (unauthorized service providers) must meet the test under Oki Data Americas, Inc. v. ASD, Inc, D2001-0903 (WIPO November 6, 2001) (also cited in Franke Technology).

Crossing the boundary (the metes and bounds that define a complainant’s rights) is assessed abusive by proof and not by assertion. This principle can be unforgiving.

An example of this is the decision in The Dow Chemical Company and E. I. du Pont de Nemours and Company v. Jung Chang Seap, D2016-0596 (WIPO July 13, 2016) (). The Panel held that “DuPont’s rights to DUPONT cannot be reasonably expanded to cover uses of DU alone, a term that can also be viewed as a simple French article. Further, there is no evidence that would suggest that DUPONT is commonly abbreviated or referred to as DU alone.”

However one may feel about the holding in Dow Chemical (it has not to my knowledge been challenged in an ACPA action, and there is no evidence of trademark infringement) it exemplifies how the balancing is applied. Complainant has no trademark for “du”, and it has no right to monopolize “chemical.” In contrast to the Dow Chemical case, there are cases in which complainants are known equally by full as by abbreviated acronymic marks, such as GENERAL ELECTRIC and GE. General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, D2000-0452 (WIPO July 10, 2000) (<generalelectric.org> and <gewarehouse.com>). The defaulting Respondent is found infringing, and Complainant prevails not because Respondent defaults but because there could be no conceivable explanation for registering domain names identical to Complainant’s marks.

Unlike trademark law which precludes competitors from employing an identical mark to one used by another with an earlier presence in the market, under domain name law respondents in the same industry as complainants using dictionary words or common expressions as their monikers (absent proof of direct and knowing competition) can co-exist even though respondent would be unable to get a trademark. Assuming the proper alignment of facts respondents may have rights or legitimate interests to their domain names even though they would be unable to obtain a trademark for the same or similar grammatical constituents. This is illustrated in two recent cases that by happenstance are in the building cleaning area, Anyclean Premium Limited v. Jethro Denahy, Any-Clean, D2017-0581 (WIPO April 28, 2017) (ANY CLEAN and <any-clean.com>) and City Wide Franchise Company, Inc. v. Cheri Quillen / City Wide Janitorial Services, LLC, Claim Number: FA1703001723195 (Forum April 30, 2017) (CITY WIDE and <citywideok.com> the “ok” is for Oklahoma).

In Anyclean Premium, the Panel noted that “the term ‘any-clean’ comprise two ordinary English words, any’ and ‘clean’. The Panel considers these could readily be independently derived by a person establishing a cleaning business and sees no reason to doubt the Respondent’s account that this is what he did before he had any knowledge of the Complainant, still less of any dispute. The Panel in City Wide similarly concluded that “it is more probable that Respondent, first, did not register or use the domain name with the intention of selling it to Complainant, but rather with the intention of using it for its own business that it was already conducting.”

Terms composed of common elements are by definition drawn from the public domain; it is how these terms are employed that determines violation of the UDRP and ACPA. If there is targeting, it must be demonstrated, not simply alleged. In other words, the balancing is achieved by assessing the totality of facts presented by the parties; it is up to the parties to make their case. In Anyclean, the Panel found that “the words ‘any’ and ‘clean’ are descriptive when applied to a cleaning business, and in such circumstances the Complainant would need to establish by credible evidence details of it having a significant reputation in those terms before the Panel would be prepared to draw inferences adverse to the Respondent. It has not done so.”

The takeaway from these kinds of disputes is that as between marks and domain names there can lawfully be correspondence (confusingly similar if not identical) even if the respondent would be barred from obtaining a trademark. Complainant has the burden of demonstrating the balance tips in its favor.

These evidentiary demands explain the absolute necessity for parties (if they make their case) to fully develop the factual circumstances. Complainants are favored when there is sufficient evidence to conclude that the terms are registered for their trademark values; it favors respondents when the uses indicate otherwise. Unless complainant’s proof reaches 51% persuasiveness (a preponderance of the evidence or more probable than not standard), it cannot prevail. Respondents don’t have to do anything. But, if the 51% threshold is achievable to avoid forfeiture respondents must themselves offer rebuttal evidence (same standard) sufficient to prevent complainant from crossing the threshold.

Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

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The Limits of Notice and Takedown

In The Limits of Filtering, Evan Engstrom and Nick Feamster argue eloquently that the costs of a “takedown-staydown” system to defend against copyright infringement would be prohibitive for online service providers (OSPs) and therefore deprive OSPs of otherwise interested investors. I agree that Engstrom and Feamster raise some valid points, particularly including that content recognition technologies are not perfect (he cites a 1-2% error rate on the specific technology he had tested) and may have costs to the OSP. However, we must also remember that the current DMCA regime imposes significant costs on content creators, particularly on small or individual artists who cannot afford the time or resources to engage in the endless whack-a-mole of notice and takedown. Moreover, the law fails to strike a reasonable balance between the legitimate needs of platforms to innovate and the needs of content creators to protect their works.

The Current Notice-and-Takedown Regime

As Engstrom and Feamster note, the DMCA today grants an OSP a safe harbor with regard to the storage or indexing of or linking to copyright-infringing material if they have no actual or constructive knowledge that the material is infringing, and if, once advised of the fact of infringement, they act expeditiously to remove or disable access to the infringing material. In other words, “takedown” is a remedy under law available to OSPs who wish to allow their users to share material with others online.

This provision has been problematic for rights holders because identical, or substantially identical, material can simply be uploaded again after each “takedown”. This creates an asymmetric, burdensome cat-and-mouse game between a holder of copyright and hundreds or thousands of deliberate infringers of that copyright, since content, once “taken” down, does not “stay” down. Most troublingly, this creates a massive imbalance between the interests of online service providers and the interests of small or individual artists.

The difference between “takedown” and “staydown” turns on the definition of “actual or constructive knowledge” in that, a service provider is presumed by courts to be unaware of the infringement status of materials until after they receive a complaint from a rights holder. This presumption is rendered invalid by today’s availability of commercially reasonable technology and tools which are capable of accurately comparing and matching many types of digitized artworks — for example, older material which a service provider has taken down as a result of a complaint by a rights holder, and newer, substantially identical material which is in the process of being uploaded.

Such content recognition technologies are not perfect (as noted, the Echoprint technology tested by Prof. Feamster at Princeton found an error rate of 1-2%), but the question is whether they are effective. To my mind, an effectiveness rate of 98-99% (the converse of Prof. Feamster’s error rate) is clearly effective and certainly a vast improvement over today’s flailing notice and takedown regime. Simple procedures can be readily adopted to address the relatively small number of false positives — such as a system by which uploaders can dispute the validity of a particular block (much as the DMCA currently provides for counter-notices). Engstrom and Feamster also point out that most piracy websites are overseas and therefore asserts that amending the DMCA to implement takedown-staydown would be pointless. I believe that the United States of America should set an example for rights protection that we want the rest of the world to follow. Also, while the site’s operator may be overseas, the content itself may often be found hosted on U.S servers.

There’s no question that running a content sharing OSP is more expensive if the cost of intellectual property protection is not externalized onto rights holders via the flawed “notice and takedown” provisions of current copyright law. However, a potential investor who had concerns in this area would be more likely to step away from the deal because of the uncertain liability and business conditions stemming from current copyright law, than because of required spending on intellectual property defense. A takedown-staydown rule with reasonably clear guidelines can provide the legal certainty and safe harbor that start-ups and investors desire while respecting the legitimate needs of content creators. Any business which cannot afford its own reasonable costs in defending its own supply chain — which includes the rights of the creators of content the site wishes to traffic in — should, in fact, be seen as less valuable.

A Solution

The current DMCA provides that an OSP must have a policy for terminating repeat infringers in order to be eligible for legal safe harbor. In today’s vibrant social networking culture, no proof of age or identity is required when creating a new account, and as a result, there is no practical way to detect or defend against repeat infringers as contemplated by the law. Online access is free, and any copyright infringer can create an unlimited supply of online identities. Since the intent of this provision of the law was and is to protect rights holders, we must consider the matter of repeat infringements and not just repeat infringers.

My proposal is for 17 U.S. Code § 512 to be revised to apply to repeat infringements and not just to repeat infringers, in which event an OSP would not be eligible for safe harbor unless they took reasonable precautions to prevent such repeat infringement. Congress could add a new § 512 (i) (1) (B) to provide for the OSP to adopt and reasonably implement: “a policy that automatically detects and either rejects or withholds from publication any uploaded work or referral to any online work which is substantially identical to an uploaded or online work that the online service provider has previously removed due to rights holder complaint, where such substantially identical nature can be determined using commercially reasonable technical measures.”

Under this provision, a rights holder need only complain once or twice to each OSP about any given infringing work. After that, the law’s safe harbor provision would not protect the OSP against further infringement involving that copyrighted work, regardless of the apparent identities of the various infringers or the relationships of these infringers to the provider. This can be achieved without creating a surveillance state and without requiring a central registry of infringements or infringers. In fact, it can be achieved without any data sharing at all between OSPs.

While this revision to 17 U.S. Code § 512 would still require rights holders to monitor many different OSP’s and to send complaints to any or all of them whenever infringing material was discovered, this would be a heavy but finite and therefore reasonable burden. By contrast, in today’s world, and under current copyright law as practiced, that burden is effectively infinite and therefore not reasonable.

Conclusion

Rights protection costs for artists have become, thanks to the current interpretations of the DMCA, a significant burden. As a practical matter, smaller artists are overwhelmed by massive levels of online copyright infringement that threaten the businesses of even the largest rights owners. An interpretation of, or amendment to, 17 U.S.C. § 512 as described would align the interests of rights holders with the interests of online service providers by requiring staydown, not just takedown, of infringing works.

See also: Vixie, Paul – First Round Comments – 2016 Section 512 Study

Written by Paul Vixie, CEO, Farsight Security

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