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The Internet Corporation for Assigned Names and Numbers (ICANN) recently permitted the registration of domain names in multilingual formats (such as PEPSI in Chinese characters). Chinese, Japanese and Korean formats are now being made available, and Portuguese, Spanish and Arabic multilingual domain names are said to be forthcoming. ICANN also recently tentatively adopted new generic top-level domain names, including “.aero”, “.biz”, “.coop”, “.info”, “.museum”, “.name” and “.pro.” Cybersquatters could conceivably obtain existing marks as domain names in the new formats, forcing the true trademark owners to buy them back. Trademark owners need to protect themselves from this possibility and be aware of the remedies available to them once it’s too late. PTO PROTECTIONS Fortunately for trademark owners, the PTO does not recognize any difference between a mark and its domain name equivalent. That is, the PTO does not recognize the difference between “XYZ,” “XYZ.com” and “XYZ.org,” for example. Therefore, trademark owners who have registered their marks need not also obtain trademark registrations for new domain name versions of those marks. Rumor has it, however, that cybersquatters are flooding the PTO with trademark applications based on their alleged intent to use various marks in the new formats. Rather than relying entirely on the PTO to reject all such bad faith applications, trademark owners should engage trademark-watching services and prepare to oppose those applications that survive the PTO’s examination process. To help ensure that such applications do not survive to publication, trademark owners may submit letters of protest opposing registration and citing the trademark owners’ prior registration. If such an application does survive, within 30 days from the publication date the trademark owner may file a notice of opposition against the mark’s registration or file for an extension of time in which to oppose. This extension can be for as much as a total of 120 days from the date of publication. WALL-BUILDING The first line of defense against cybersquatting is to “build a wall” around a trademark by obtaining numerous domain names that reflect the trademark’s possible variations (for example, XYZ.com, XYZ.firm and XYZ.Web). Depending on the importance of the trademark and on budget, the wall can include any number of other permutations of the mark, including the following: plurals; sound-alikes; prefixes such as “i,” “i-,” “e” and “e-;” and suffixes such as “online,” “net,” “com” and “Web.” For trademark owners involved in foreign language businesses, this wall should include multilingual forms of the mark. Ideally, as soon as ICANN approves the new top-level domains, trademark owners should apply with the domain name registrars to obtain their marks in each of the new formats that are available to them. Obtaining additional domain names is far less expensive than attempting to force interlopers to transfer or abandon their domain names. POSSIBLE LEGAL ACTION What if a cybersquatter has gotten there first? Once it is determined that the domain name holder is a true pirate and not a good faith user of the mark — particularly not one with greater rights�one option is to send a letter to the domain name holder demanding that it cease and desist all use of the domain name or any similar name. Using this approach, a trademark holder has a chance of resolving the matter without litigation but risks the current domain name holder’s assignment of the domain to an untraceable owner. If the cyberpiracy is based on an existing top-level domain, a trademark holder also may file a Uniform Dispute Resolution Proceeding (UDRP); whether UDRPs will be available to resolve issues involving any of the new domains has yet to be decided. Since a UDRP is generally quicker and less expensive than a lawsuit, trademark owners are pressing for such protection. Trademark owners generally prefer to file with the World Intellectual Property Organization (WIPO), although other providers do exist. Statistics-tracking UDRPs — available on WIPO’s Web site — show that, as of early October, WIPO found for the trademark holder almost 75 percent of the time. However, the remedy is limited to a mandatory transfer or cancellation of the domain name; it does not extend to an injunction against other misuse of the mark or provide for any monetary relief. In the United States, trademark owners who seek injunctive and monetary relief as well as a transfer or cancellation of the offending domain name must turn to federal court. The Anticybersquatting Consumer Protection Act (ACPA), which was enacted to combat cybersquatting specifically, would be applicable to the new top-level domains. Under the ACPA, the trademark owner must prove that the accused domain name is the same as or confusingly similar to the trademark owner’s mark and that there is a bad faith intent to profit from the mark. Evidence of bad faith includes the following: failing to use the domain name to provide or sell goods or services; using the domain name to divert the trademark owner’s customers to the domain name owner’s Web site; offering to sell the domain name to the trademark owner; and engaging in a pattern of registering domain names for the sole purpose of selling them. A trademark owner also may plead more traditional claims based on federal trademark infringement, dilution and unfair competition law and comparable state laws that do not require bad faith. The majority of the few ACPA decisions reported thus far appears to favor the trademark owner. A word of caution, however: Short of moving for preliminary injunctive relief (which is expensive and requires a showing of imminent harm) or being fortunate enough to obtain a default judgment, a federal lawsuit likely will be slower and far more costly than filing a UDRP. FOREIGN DOMAIN NAMES Holders of domain names containing any of the various foreign top-level domains, which are administered by registrars in the countries to which they belong, should be especially diligent in preserving their rights. For example, any Canadian (“.ca”) domain name that was not renewed before Dec. 1 or within the renewal grace period ending on Jan. 31 will become inactive or available to others for registration. Rose Auslander is counsel and Douglas Royce is an associate in Carter, Ledyard & Milburn’sIntellectual Property Practice Group in New York. A different version of this article appeared on Computer World Online on Oct. 19, 2000. The article is reprinted with permission of Computerworld. The authors have added material for its publication in the Intellectual Property Strategist.

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