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FALL 2018 TODAY’S GENER AL COUNSEL

Intellectual Property

Protecting Your Company’s Domain Name By Sharon Urias and Todd Langford as Zambezi Technology Solutions, is engaging in cybersquatting, the first step generally is to send a cease and desist letter. It is important to proceed without delay, as recent court decisions have affirmed that a lack of diligence in policing and enforcing your marks may support a potential infringer’s defense of laches. But what if the domain registration is private and you do not know who owns the domain? Or what if the domain owner does not respond to your letter? At that point, your recourse is arbitration or litigation. UDRP ARBITRATION

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ou are the general counsel of Zambezi.com, a giant online retailer named after the longest east flowing river in Africa. Your employee responsible for monitoring the Zambezi trademark on the Internet has notified you there is a new online business called Zambezi Technology Solutions, which advertises its technology services at zambezitechnology.com. You are concerned that Zambezi Technology Solutions is infringing on your Zambezi trademark, and its use of Zambezi will cause consumer confusion and dilute the strength of the Zambezi mark. How can you stop Zambezi Technology Solutions from using zambezitechnology.com? This article will discuss cease and desist letters, domain name disputes, cybersquatting and brand protection on the Internet. POLICE YOUR MARK

Nearly all successful businesses maintain an online presence in one form or another, often incorporating the company’s trademark into the domain name. It is highly advisable to monitor the use of your trademark on the Internet, including

e-commerce websites, social media sites, blogs and other sites that may be relevant to your company’s business. Although other entities cannot use your company’s specific domain name, they may seek to use similar domains to pull unwitting customers from your website. For example, you may encounter a cybersquatter who acquires the domain zambezi.biz. Or you may encounter a subset of cybersquatting referred to as “typosquatting” (e.g. registering “zambozi.com” to trick users attempting to visit your website at zambezi.com). Some businesses combat cybersquatting by acquiring some or all top-level domains (e.g. .com, .biz, .org), acquiring misspellings of their domain name and acquiring related domains (e.g. shopzambezi.com). While this is advisable, registering all possibilities may not be practical due to the vast number of permutations. If you engage in this strategy, you will need to avoid inadvertent cybersquatting, as the misspelling or related domain may be another entity’s brand without a good faith basis to use that domain. If you believe that someone, such

Registrars that are accredited with the Internet Corporation for Assigned Names and Numbers (ICANN) are governed by ICANN’s rules and procedures. As such, domain names registered with ICANNaccredited registrars are subject to mandatory arbitration under the Uniform Domain Name Dispute Resolution Policy (UDRP) to resolve disputes over the domain names. Although mandatory for the domain name holder, a complainant has the option to seek court relief without first going to arbitration. Nevertheless, a UDRP arbitration may be preferable because it is relatively quick and inexpensive compared to litigation. Formal notification of the domain name dispute may be achieved by sending the appropriate documents to the email address associated with that domain name. This is practical in instances where the alleged cybersquatter is in a foreign country or its identity is unknown. Drawbacks to arbitration include no monetary damages, and the arbitration decisions are non-binding. You still may end up in court. All approved dispute-resolution service providers must follow the UDRP, which maps out the rules for arbitration. Under the UDRP, an injured party may

Today's General Counsel, Fall 2018  

Once upon a time the EU was a trusted trading partner of the United States. That was pre-Brexit and the present administration’s tariff regi...

Today's General Counsel, Fall 2018  

Once upon a time the EU was a trusted trading partner of the United States. That was pre-Brexit and the present administration’s tariff regi...