A company hoping to offer .bank and .secure domain names has managed to get a trademark for .secure from the U.S. Patent and Trademark Office — albeit on the supplement register.
How did it do this, since the USPTO won’t grant trademarks on top level domains?
First, Asif LLC didn’t tell the USPTO the trademark was for a top level domain name. Instead, it says it’s for “Domain name registration services”.
Second, it submitted proof of use in commerce that was nothing more than a Go Daddy/Wild West Domains reseller page.
The company has also applied for a trademark for .bank using the same field of use and a GoDaddy reseller web site as proof of us. It is still pending.
The .secure registration number is 4068800.
[update: as Karen Bernstein points out, VeriSign filed to potentially oppose the application, but filed at the incorrect time. I don't see an opposition to .bank.]
“Company Manages to Get .secure Trademark – Domain Name Wire.” Domain Name Wire. Domain Name Wire, 12 Dec. 2011. <http://domainnamewire.com/2011/12/12/dot-secure-trademark/>.
Virginia Comito, d.b.a. V.L. Raymer, is a California-based domain investor who bought occupy.com in 1998. Now, she’s selling it to the one percent.
“People who are extremely wealthy, who are philanthropic, who want to help the movement, the concept would be for one of those folks to buy it and donate it to Occupy, buy it and have it serve as a central repository since there is no centralized resource,” said Karen Bernstein, a New York-based lawyer who handles Ms. Comito’s domain sales. ”This would be a perfect match,” she said.
OccupyWallSt.org has been serving as the main hub for updates from the organizers, but it’s not being marketed as an official online headquarters.
Ms. Bernstein hopes to get “six digits” for the domain, which ordinarily would have been worth a few thousand.
Ms. Comito owns on the order of 4,000 domain names, which she started purchasing in the late 90s–cakebooks.com, cherokee.com, thighs.com, citydata.com, sportscoverage.com–many of which are sitting empty or with placeholders.
Ms. Bernstein said that Ms. Comito, who declined to comment, approached her with the idea to sell occupy.com.
“I also started thinking more and more about it and I got more and more excited,” Ms. Bernstein said. “Really they’re a very decentralized group. They’re very tech-savvy. They’ve got their Twitter. They’ve got their social media. But they don’t have one site everyone can go to.”
There has been some interest, she said, but couldn’t disclose what the highest offer was.
Ms. Comito has had a few of the legal run-ins that come along with domain investing, including a judgment of bad faith registration with the evening music radio show “Delilah After Dark,” which successfully argued its trademark, as well as being named by an overly aggressive attorney in an apparel counterfeiting ring. “My client was wrongly accused of being an apparel counterfeiter and the plaintiff dismissed the case,” Ms. Bernstein said in an email. “We are seeking $96,000 in attorneys’ fees against the aggressive attorney and her clients and for the court to dismiss the case with prejudice.”
“[Ms. Comito] is a businessperson who just started collecting domain names like some people collect coins,” said Ms. Bernstein, who also does trademark and copyright law in New York. ”It’s an exciting business. It’s not easy selling domain names.”
Would Ms. Comito consider donating the domain name herself, we wondered, in the absence of a buyer?
“I can’t make a comment on that,” Ms. Bernstein said.
Business is good, she said, but not that good: Ms. Comito is still a decided member of the 99 percent, even though the domain investor is not personally interested in the Occupy Wall Street movement.
Jeffries, Adrienne. “BetaBeat.” Weblog post. Owner of Occupy.com Selling It for Six Figures. BetaBeat. <http://betabeat.com/2011/10/21/owner-of-occupy-com-wants-to-sell-it-to-the-one-percent-for-six-figures/>.
Still Squatting After all these Years? (Whether you know it or not!) By Karen J. Bernstein, Esq – Guest Blogger
These days, sophisticated web users understand and respect the fact that they can’t register domain names that belong to individuals or businesses who own trademarks (like McDonald’s or Starbucks), in hopes of later selling the domain names back to them for large sums of money. Beyond being morally questionable, this behavior is illegal.
Commonly referred to as “cybersquatting,” in the earliest days of the Internet (circa 1996), this kind of behavior was common place, and no one was policing these renegades on behalf of brand owners. Over the years, however, trademark holders became incensed by the outrageous sums of money that “cybersquatters” were extorting from them, so they went to the legislature to stop those types of activities.
In 1999, with mounting pressure over how to enforce trademark holders’ rights against squatters, the Internet Corporation for Assigned Names and Numbers (ICANN) through the World Intellectual Property Organization (WIPO), an organization created by an international treaty signed by numerous countries, created the Uniform Domain Name Dispute Resolution Policy (UDRP). This is an administrative proceeding set up solely for the purpose of considering whether a domain name should be transferred to the trademark holder or canceled (i.e., removed from the domain name registrant and then made available to the public).
The UDRP makes sense because it enables trademark holders to bring domain transfer suits against domain name registrants who reside anywhere in the world without having to go to the domain name registrant’s country to sue them. It also gives the trademark holder an efficient process with a short turnaround time for a decision to be rendered costing less money than what would be required to recover the domain name in a foreign country.
So, you ask, what does the history of UDRP have to do with .CO? The answer is that when you register a .CO domain name you are agreeing to be subjected to the UDRP in the event an individual or entity claims that your domain registration infringes on or violates their rights. So please, be responsible with your choice of .CO domain names.
It’s hard to believe, but there are small minority of people who still seem to think they can simply register a domain name with someone else’s trademark and try to profit by selling it back to the brand owner — or by otherwise leveraging the goodwill of their brand. You can’t! And unlike the “old days” of the Internet, today’s laws are exceedingly clear on this point!
Well, you might ask, “what if I register a .CO domain name that violates someone’s trademark — but I didn’t even know they existed? Surely, I’ve done nothing wrong if I didn’t mean it, right?” Wrong. Like the old saying goes, “Ignorance of the law is no excuse.” So be careful. You may think you have a great domain name for your new business or blog — but you still may find out later that you have unwittingly registered a name that infringes on someone else’s trademark.
The bottom line is this, whether it was done intentionally — or simply due to ignorance of the law — you may very well lose a UDRP proceeding (and your domain investment) if your .CO domain name infringes on or violates someone else’s trademark.
So what should you do? The answer is simple! Do your homework!
Respect the rights of others — and protect your own time, energy and investment — by contacting a trademark lawyer and having them conduct a trademark search before you buy a .CO domain name. An attorney can help you to determine whether your registration of the proposed domain name would violate a third party’s rights, considering how you plan to use the domain name and your purpose for registration.
Thanks to Karen J. Bernstein for this great post!
Karen has been associated with two highly-regarded Park Avenue intellectual property and entertainment business law firms in Manhattan. As an IP associate, she benefitted from working closely with esteemed attorneys and gained experience in her areas of concentration. Karen’s clients include well-known celebrities, speakers, and small to medium sized businesses.
Bernstein. Karen “Still Squatting After All These Years? (Whether You Know It or Not!) By Karen J. Bernstein, Esq – Guest Blogger | The .CO Registry.” Weblog post. CoInternet.co. CoInternet.co, 8 Aug. 2011. <http://www.cointernet.co/blog/still-squatting-after-all-these-years-whether-you-know-it-or-not-karen-j-bernstein>.
You’ve undoubtedly heard of TheCoveted.com, a darling new website that gives us a peek inside the homes and wardrobes of fashion industry favorites. You’ve also probably heard about the little war raging between this new site and Jeanine Jacob, founder of Independent Fashion Bloggers, as well as her very own blog, The-Coveted.com. Both sites, thus, are called The Coveted, and Internet commenters have had a field day trashing the “new” Coveted and defending the “old” Coveted.
And rightly so. While it’s true that the sites are very different in style and audience, there’s just no way The Coveted founders Erin Kleinberg and Stephanie Mark didn’t know The-Coveted existed before they launched their site. Sure, they might not be subscribing to Jacob’s site on their RSS feeds, but for someone to launch a website/blog and not even Google the name to make sure nothing else was named similarly seems pretty absurd.
But that’s exactly what Kleinberg and Mark are claiming. In fact, in a letter to Jeanine Jacob’s lawyer responding to a request that TheCoveted.com cease using that domain (you can read it here), the duo’s lawyer says that they were “unaware of your clients’ website” and that if Jacob doesn’t leave them alone, they’re going to sue her.
This all seems a bit insane to us, but we decided to consult a couple of lawyers to make sure we weren’t missing an inextricable point. The conclusion: While in bad form, TheCoveted.com probably didn’t do anything illegal by using that domain. However, Jacob does have a case–even if it’s a weak one.
Karen J. Bernstein, a New York-based lawyer specializing in domain law, says that, “Generally, United States trademark law looks at who uses a mark first, not who files the trademark first in the United States Patent and Trademark Office. Therefore, depending upon who used THE COVETED first and if the competing uses are the same or similar, then perhaps the-coveted.com might have a case.”
Here’s what Eric Goldman, Associate Professor at the Santa Clara University School of Law and a tech law expert, had to say:
Given that it’s a common verb to describe people’s feelings towards fashion, is it possible to get a trademark in the term “coveted” for the fashion publishing industry? Covetedlist.com has a registered trademark (registration # 3741050), but “the-coveted.com” is a weaker mark than that. Did the-coveted.com engage in enough commercial activity to start accruing trademark rights? Not all blogs meet this standard. I could not find a trademark registration application for the-coveted.com. If the-coveted.com does have protectable trademark rights, do they extend to cover thecoveted.com’s activities? I wasn’t clear if thecoveted.com was a commercial enterprise, and even if it is, trademark law might let the two companies sit next to each other, just like hundreds of companies have co-existing trademark rights in terms like Sun or American or “National.
Goldman is also curious as to why Jacob didn’t buy TheCoveted.com in the first place. We’re assuming it was owned by someone else at the time Jacob launched her blog, and that she didn’t want to pay for it. We’ll also assume that the domain was already registered when TheCoveted decided to buy it, and that they paid a decent sum for it.
As for Kleinberg and Mark’s case against Jacob, Goldman says it’s laughable. “It’s pretty unusual for an alleged trademark defendant to say that it will negotiate with the other party only if they cease ‘engaging in making further commentary regarding this matter.’ Good luck with that! It’s especially odd request to make to a blogger.”
But all in all, it’s unlikely anything is going to happen. “As a practical matter, once the parties get past their posturing and chest-beating, it’s highly likely this case will resolve out-of-court,” says Goldman.
We’re just disappointed that any of this had to occur. TheCoveted.com is a great site, and we wish they would’ve just done a bit more homework., because now their super-successful launch is tainted.
Sherman, Lauren. “Fashionista.” Fashionista.com. Fashionista.com, 28 Jan. 2011. <http://fashionista.com/2011/01/the-coveted-v-thecoveted-lawyers-weigh-in-on-the-blog-war/>.