Trademark Vigilance -- Which TLDs?

[dotsofdomains]

How far will the trademark vigilance requirement extend beyond the dot-com gTLD?

As for the trademark vigilance to which the courts will hold the owners of TMs, only time will tell. Not even the giant owners of world-famous marks give a rat's ass about the country code domains outside of their possible areas of market expansion, and after that it is catch-as-catch-can as to whether the mega businesses give a damn about .net, .org, .web, .biz, .info, or any other me-too TLD. A few years ago they all watched .net and .org, but with the rapid expansion of gTLDs, the cost-benefit ratio is only being tempered by the enthusiasm of the courts to hold the TM owners to a high and--in my view--increasingly extensive and unreasonably expensive registration/policing/cease & desist/litigation program.

My prediction is as the gTLDs proliferate, and the alternative non-ICANN TLDs assert their ugly little heads with increasing determination, the courts will find it unreasonable to require a business that owns, for example, a couple hundred or even a couple dozen trademarks to police anything other than .com domains.

 

[Nic]

Originally posted by dotsofdomains
My prediction is as the gTLDs proliferate, and the alternative non-ICANN TLDs assert their ugly little heads with increasing determination, the courts will find it unreasonable to require a business that owns, for example, a couple hundred or even a couple dozen trademarks to police anything other than .com domains

I agree

 

Originally posted by dotsofdomains


Not even the giant owners of world-famous marks give a rat's ass about the country code domains outside of their possible areas of market expansion, and after that it is catch-as-catch-can as to whether the mega businesses give a damn about .net, .org, .web, .biz, .info, or any other me-too TLD.

State Farm Insurance successfully sought UDRP arbitration for "state-farm.ws."

http://www.arbforum.com/domains/decisions/98822.htm

There have been a number of UDRP actions--many of them very recent--taken against TM-infringing .net's, .org's, .biz's and .info's.

A few years ago they all watched .net and .org, but with the rapid expansion of gTLDs, the cost-benefit ratio is only being tempered by the enthusiasm of the courts to hold the TM owners to a high and--in my view--increasingly extensive and unreasonably expensive registration/policing/cease & desist/litigation program.

For any larger-sized corporation, UDRP actions, at $1500-$5000 a pop (with another $5000 of their own internal or external legal costs) are pocket change...well within "the cost of doing business." That's why the big TM holders love ICANN and especially the UDRP. And cybersquatters rarely have the resources or motivation to take the matter to civil court.

My prediction is as the gTLDs proliferate, and the alternative non-ICANN TLDs assert their ugly little heads with increasing determination, the courts will find it unreasonable to require a business that owns, for example, a couple hundred or even a couple dozen trademarks to police anything other than .com domains.

Possibly. Do you have links or anecdotal material along this line, or is this your sense of where things are going?

Big TM holders vigilantly protect their marks not just because of the vigilance requirement of TM law, but because TM and brand are genuine assets that they don't wanted devalued in any way. McDonalds is notorious for going well above beyond the call of legal duty to attack anything with a "Mc" in it.

I think all infringing domain registrations will remain risky, regardless of the extension.

And pity the person whom a big corporation decides to make an example of by going the ACPA route instead of UDRP. A startling number of newbies seem unaware of the Anti-Cybersquatting Consumer Protection Act, and the very real set of teeth this piece of legislation has, particularly if you live in the U.S.

Miles

 

[dotsofdomains]

Please note that I am NOT saying that companies will not or should not continue to use the UDRP proceedings to obtain second level registrations that are identical or confusingly similar to their marks. Furthermore, I am NOT saying that if the vigilance standard is relaxed that the companies will be less successful should they still elect to use the UDRP and the courts to enforce their marks.