Strategies for IP Protectionin Online Platforms

mike rodenbaugh

American Conference Institute E-SummitApril 24, 2008

Keywords and Domain Names

• Keyword/trademark advertising – "use" of a third party's trademark in commerce?– how and when to stop others from bidding

• Different search engines -- different policies• Domain name tasting; PPC cybersquatting • Phishing on the rise• Confronting infringers• Policy Development?

Native v. PPC results

Pay-per-click Ads = UGC?

• Advertisers choose ad text and keywords– With some help from search engine ad providers– Keyword generators , editing, review– Terms of Service, of course, make advertiser responsible

for content and keywords

• PPC domain registered by owner– Content (context) provided by domain owner– Ad feed provided by Google or Yahoo!– Advertisers can opt out of specific domains, or from domain

parking channel

Keyword Bidding = TM “Use”?

• 2d Circuit courts say NO – claim dismissed– Buyers: Merck, Hamzik, FragranceNet– Platform: Rescuecom v. Google (on appeal)

• Other Circuit courts say YES – claim continues– Buyers: Edina Realty, Buying for the Home, JG

Wentworth– Platforms: Geico, American Blinds, JR Cigar

Keyword Bidding -- Europe

• France – Google liable for TM infringement for suggesting TMs as relevant keywords in relation to generic terms

• Germany – Google did not make TM use• Italy – neither Google nor advertiser made TM use• Netherlands – advertiser did not infringe• UK – Yahoo! did not infringe by “broad match” of ads

competitive to Mr. Spicy, for ‘spicy’ queries; and did not make TM use

Trademark Policy

• TM keyword bid only permitted in “Sponsored Search” if:– Nominative fair use -- resellers– Descriptive use -- information site AND not selling or

promoting competitive goods– Will not address TM complaints in native search

results

TM Policy - AdWords• Two choices: Specific complaint, or general

– Specific complaint vs. specific URLs– general complaint vs. all ads, identify any authorized users

• US, Canada, UK/IE– will not disable keywords in response to TM complaint,

but will remove TM from ad text

• Rest of World– will disable TM as keyword and remove from ad text

• Either way, also will prevent from future use

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Trademarks As Keywords

Search term: Ford

Ad text:Compare Escape to EquinoxSee For Yourself How Chevy EquinoxStacks Up Against the Escape Now!www.chevyfirst.com

GM 100,000—Mile WarrantyCompare New GM Powertrain Warranty on 2007 GM Cars and Trucks Now!www.gm.com/warranty

TM Policy -- AdSense

• encourage TM owners to resolve disputes directly with registrants or registrars(!)

• “As a courtesy to trademark owners, however, we are willing to perform a limited investigation of reasonable complaints.”

• Google also allows advertisers to opt out of domain channel

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Domain Name “Tasting”

• Register and “taste” name for 5 days• Measure traffic & revenue via PPC ads• Return 98% of domains for full refund• Keep and pay for profitable domain names• Monetize domain names via PPC ads,

popups, redirection– Get paid by Google or Yahoo!– Wait for C&D, UDRP or ACPA complaint

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Domain Name Kiting

• Repetitive Tasting – Registrars and registrants taste (monetize)

domain names in bulk and delete them– Then, using an automated process, they

automatically re-register them... again and again.

– Often through affiliated entities, in effort to evade detection

ISP Use of Non-registered Domains

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Domain Name Remedies

• Uniform Dispute Resolution Policy (UDRP)– Arbitration procedure mandated by ICANN via

domain name registration agreement– Rapid Time Scale – No Monetary Damages

• Anti-cybersquatter Consumer Protection Act (ACPA) – 15 USC 1125(d)– in personam– in rem

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Recent UDRP Cases of Note• Reseller makes bona fide offering and thus

legitimate use? • NASCARtours.com – Respondent prevails

because he offers ‘only tours of NASCAR events’ and provides prominent disclaimer

• GE-Merlin.com – Complainant prevails because of likely initial interest confusion, despite sale only of Merlins, and prominent disclaimers

• Source: Verisign’s .com registry report, Apr. 2007

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ACPA Cases of Note• Vulcan Golf et al. vs. Google et al. (USDC N.D. IL,; Case No. 07-Civ-

3371)– Class action against registrants, parking companies, and

advertisers– Motion to dismiss denied in part (RICO and some state claims

dismissed; federal TM claims remain)

• Dell and Yahoo! et al v. BelgiumDomains et al. (USDC S.D. FL; Case No. 07-Civ-22674)

– Civil case for cybersquatting, counterfeiting, TM infringement– Federal seizure raid conducted with US Marshals– Pre-judgment asset freeze (+1 million domain names and

millions of dollars)

Phishing Attacks Multiply

• Number of incidents and of targeted brands continues to rise

• Sophistication and efficiency of attacks continues to rise – esp. “fast flux” abuses

• Social networks frequently targeted, enabling spear phishing

• Phone phishing now common• IDNs becoming more widespread

IDNs and new TLDs are coming!

• 简体中文 繁體中文 العربيةΕλληνικά हि�न्दी 日本語 한국어 יִידיש Русский فارسیதமிழ்

• .web, .blog, .sex … anywhere from 100 to 60 million other new TLD extensions

IP Rights Protection Mechanisms

• Cybersquatting and Phishing is too quick and easy, and remedies are too expensive and slow

• Policy Development is needed to fix this• Potential options:

– Standardized Sunrise Registration Process– Faster and cheaper pre-UDRP process, with rapid

DNS suspension upon default– Rapid DNS suspension upon evidence of phishing

or malware (to be tested in dotAsia?)

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Questions?