Trademark > Cybersquatting; Debunking the Myth

March 9, 2011

Part 1 – Registering a trademark could (or could not) prevent cybersquatting

I was recently reading an article from Inc.com about actions that website owners can take to reduce their risk of becoming a victim of cybersquatting.  One of the top recommendations was trademark your business name with the United States Patent and Trademark Office.  I would guess if you surveyed Intellectual Property attorneys, 9 out of 10 would whole heartedly agree with this statement.  As a matter of fact, San Francisco attorney Richard Stim went so far as to issue the following statement in the Inc.com article, “There are two ways you can have a trademark: it can be registered or unregistered. Having it listed in the government registry is the right way to go.”  Conventional wisdom supports this; however, I am partial to a phrase at Despair.com: “Just because you’ve always done it that way doesn’t mean it’s not incredibly stupid.”

Let’s have a look shall we?

If you recognize the term MMORPG you can skip to the next paragraph.  For those that don’t, the acronym stands for Massively Multiplayer Online Roll-Playing Game.  For the full nerdy explanation you can visit Wikipedia (http://en.wikipedia.org/wiki/Mmorpg).  One of the most popular MMORPGs is World of Warcraft (owned by Blizzard Entertainment) which had more than 12 million subscribers as of October, 2010 (this is an important date to remember).  History:  World of Warcraft, often referred to as WoW, was released on November 23, 2004 and was followed by two expansions; The first, The Burning Crusade, was released on January 16, 2007 and the second, Wrath of the Lich King, was released on November 13, 2008.  The much anticipated third expansion was officially announced at BlizzCon on August 21, 2009, although details were discovered earlier by “leaks”.  One of the details players were buzzing about was what the third expansion was going to be called.

Blizzard Entertainment set out to protect the brand name for their third expansion using conventional wisdom.  They filed 5 applications with the United States Patent and Trademark Office (USPTO) on June 6th, 2009 for the term “Cataclysm.”  The applications have still not been issued.  The mere presence of Trademark Applications did nothing to slow down rampant cybersquatting.  In fact, it appears that because the Trademarks were filed and listed at the USPTO website, and the owner was listed as Blizzard Entertainment, it served to notice those that were monitoring that Cataclysm was to be the name of the third release and the infringers went about the business of scooping up domain names; 246 names to date.  Not coincidentally the timing of those registrations began in July of 2009.

Visually the impact of the Trademark applications being publically searchable is undeniable.  And while the huge spike in registrations occurred in the frenzied months prior to the announced launch date, the damage had already been done.  47 of the most valuable domain names from a marketing and keyword perspective were already taken by April 2010.

What does all this mean?  Well, for one I think it is safe to say cybersquatters are sophisticated enough to know, understand, and take advantage of the traditional methods for launching and protecting a brand.  I also think it is safe to say that cybersquatters know it takes a great deal of time for Trademarks to issue and they are happy to profit from the USPTO’s lethargy.

This is also a clear indication that the traditional methods for brand protection need to be thrown out the window.  There are enough tools available to defensively register domain names.  There are plenty of services out there that can recommend strategies for launching a brand AND protect it from domain name infringement without the benefit of a Trademark.

Let’s face it, with all of the resources out there to properly deal with preventing infringement, if you stick with the “traditional” methods you’re going to look stupid.

*The information provided in this article is not legal advice, but general information on legal issues commonly encountered.

Corporation Service Company and Alias Encore Launch New Domain Recovery Service

September 21, 2010

FOR IMMEDIATE RELEASE

FOR MORE INFORMATION, CONTACT:
Alias Encore Sales
sales@aliasencore.com

Santa Barbara, CA: Corporation Service Company® (CSC®) and Alias Encore, Inc., announced today that the two companies have entered an exclusive partnership to offer best-in-class domain recovery services to brand holders worldwide. The announcement coincides with the beginning of the Commission Junction® CJU 2010 conference, where the topic of digital brand protection will be on many attendees’ minds.

Since the mid-1990s, brand owners have faced the daunting challenge of dealing with unscrupulous registrants who seek to profit from Internet domain names that include company trademarks or misspellings thereof. Called “cybersquatting” or “typosquatting,” this problem has grown to encompass millions of potentially infringing domain names – a scope most companies can’t possibly address on a case-by-case basis. Brand owners lose untold millions in revenue every year when Internet traffic is surreptitiously redirected to competitors or other third parties by way of advertisements displayed on Web sites reachable through cybersquatted domain names.

CSC has been at the forefront of the digital brand management industry since becoming an ICANN-accredited registrar in 2000, and today is one of the largest corporate registrars serving Global 2000® companies. A trusted advisor to intellectual property and legal professionals for more than 100 years, CSC offers an unparalleled suite of Internet-related services, including both domestic and international (ccTLD) domain name management, trademark and brand monitoring, phishing protection, and domain strategy. A recent survey by World Trademark Review ranked CSC #1 in customer approval for domain and online services.

Founded in 2008, Alias Encore has established itself as the technological leader in the rapidly maturing field of high-volume, automated domain recovery. Alias Encore’s systems allow for the efficient, simultaneous recovery of thousands of infringing domain names, freeing companies to focus on their business rather than playing cat-and-mouse games with cybersquatters. Both firms expect that Alias Encore’s platform and expertise will reinforce CSC’s industry-leading position from the standpoint of scope and sophistication.

“We evaluated the domain recovery industry thoroughly and came to the conclusion that Alias Encore stands head and shoulders above the competition,” said Mark Calandra, vice president at CSC. “In particular, we were impressed with the deep analytics, transparency, multivariate testing, and other advanced platform features that other providers don’t even begin to offer. Also, the speed at which Alias innovates and develops new technology is remarkable.”

Graham MacRobie, Alias Encore’s president and CEO said, “Increasingly, companies are demanding that their domain recovery provider execute with a degree of professionalism that can be challenging for a small firm to achieve. Working alongside CSC, I’m excited to decisively settle the ‘size matters’ debate with our competitors, allowing us to focus on building the technology and expertise that powers our world-class domain recovery solution. I consider it a privilege to work with CSC – a venerable institution with deep and pervasive connections throughout the Internet and legal communities.”

The new domain recovery service is available immediately. For more information, please contact sales@aliasencore.com.

About CSC
Corporation Service Company provides matter management, corporate compliance, and trustee services for companies and law firms worldwide; domain name and trademark services for top global brands; and due diligence and transactional services for the world’s largest financial institutions. It is one of the largest registered agent providers in the United States.

Founded in 1899, CSC is a privately held organization headquartered in Wilmington, Delaware, U.S.A. CSC works with more than 75 percent of the Fortune 500® and more than half of the world’s best brands as ranked by Interbrand®. To learn more about CSC, visit www.cscglobal.com, or follow CSC on Twitter at twitter.com/cscglobal.

About Alias Encore, Inc.
Alias Encore is squarely focused on helping companies increase highly qualified traffic to their Web sites through the strategic acquisition of misspelled domain names. It is no longer sufficient for a company to own only the domain name that exactly matches their trademark. This is because significant revenues are being surreptitiously diverted to competitors through literally millions of “typosquatting” sites that seek to improperly capitalize on the accidental keystrokes of unsuspecting Internet users. Alias Encore puts a stop to this domain name fraud, dramatically increasing revenues as a direct result.

Alias Encore was founded in 2008 and is privately held. The company’s headquarters are in Aliso Viejo, California. For more information, please visit www.aliasencore.com, or follow Alias Encore on Twitter at www.twitter.com/aliasencore.

# # #

Alias Encore, Inc. Announces Open Beta for New Self-Service Domain Enforcement and Management System

January 27, 2010

FOR IMMEDIATE RELEASE:

Aliso Viejo, CA (January 27, 2010) – Alias Encore, Inc. announced today that it has begun accepting applications from those interested to gain early access to the firm’s new self-service Domain Enforcement and Management System through a public beta program.

“We couldn’t be more excited about this new system,” said Graham MacRobie, President and CEO of Alias Encore. “We’ve taken years of experience and distilled it into a fully integrated platform that makes domain enforcement and management a breeze, even for those with limited exposure to the space. In the process, we’re fundamentally changing the industry economics that have previously made large-scale domain enforcement impractical.”

Key features of the new system include:

  • Full-Featured Analysis Tools – the system allows users to easily find potentially infringing domain names, and then prioritize actions based on the nature of the infringement or the projected traffic for each name. Law firms or others that manage multiple accounts are able to work within a single account, or across multiple accounts and brands for additional efficiency.
  • Uniform Domain-Name Dispute-Resolution Policy (UDRP) Construction Kit – drafting and filing a UDRP used to require the expertise of an attorney or the assistance of a specialist firm such as Alias Encore or CitizenHawk. Now, companies can easily create their own UDRPs online, start to finish, with just a few clicks. Sophisticated algorithms ensure that the finished result not only complies with all of the applicable standards, but also accurately represents the key issues surrounding each unique case.
  • What-You-See-Is-What-You-Get (WYSIWYG) UDRP Editor – users can avail themselves of the system’s built-in UDRP templates to easily create filings for the National Arbitration Forum (NAF) or the World Intellectual Property Organization (WIPO), or they can use the system’s inline editor to customize the document as they see fit, even creating templates of their own for other types of domain-centric documents including demand letters, litigation pleadings, and more.
  • Clause and Citation Library – a large and growing collection of battle-tested clauses and UDRP decision citations are ready to drop into a case, making research considerably simpler. Of course users can edit these or add their own. Also, each clause can reference a Boolean logic expression which controls the circumstances under which the clause appears in the final document. The system’s standard templates already include a rich set of clauses to cover a wide variety of common situations, meaning many users will never need to concern themselves with these details, but the flexibility will be of interest to attorneys and other power users.
  • PDF Document Assembly Including Exhibits – UDRP filings and other domain disputes, particularly in complex cases, can have extensive exhibits including screenshots, WHOIS records, and more. The system automates the collection of these elements, and then ensures that the appropriate exhibits appear in the finished document.
  • Domain Portfolio Management – easily manage a large portfolio of domain names, even across multiple registrars, without having to transfer any of the domain names to a different registrar. The system provides integrated domain forwarding and traffic monitoring features, making it simple to make traffic-based renewal decisions and to ensure that all domains resolve to an appropriate location. Never accidentally drop a UDRP-won domain again!

In summary, Alias Encore’s new system is intended to be a self-service, soup-to-nuts platform that allows brand holders to finally take full control of their domain portfolio, including enforcement actions. Intellectual property law firms will also find value in the system, particularly in the ability to drastically reduce the complexity of constructing UDRP and other domain-dispute documents on behalf of their clients, as well as in the ability to easily cost-justify enforcement actions through traffic and resultant revenue projections.

Final pricing has not been determined, but Alias Encore expects to offer the new system at a per-UDRP price point considerably below other methods of drafting UDRPs. Although Alias Encore intends to continue offering its CPA-based pricing model for interested parties, this new flat-rate model requires no time commitment, no contract negotiation, and can be implemented to compliment current domain recovery efforts.

Anyone interested in participating in the free public beta should send an email with contact information to beta@aliasencore.com.

Screenshot 1

Powerful Domain Management

Screenshot 2

UDRP Construction Kit

Screenshot 3

Inline UDRP Editor

Screenshot 4

Clause and Citation Library

Screenshot 5

Flexible Views

 

Alias Encore is not a law firm and does not offer legal advice. Although UDRP complaints are not technically considered legal documents, users of Alias Encore’s UDRP Construction Kit are strongly encouraged to seek the advice and review of a qualified professional prior to filing.

CitizenHawk, National Arbitration Forum, and World Intellectual Property Organization are trademarks of their respective holders.

About Alias Encore, Inc.

Alias Encore is squarely focused on helping companies increase highly qualified traffic to their websites through the strategic acquisition of misspelled domain names. It is no longer sufficient for a company to own only the domain name that exactly matches their trademark. This is because significant revenues are being surreptitiously diverted to competitors through literally millions of “typosquatting” sites that seek to improperly capitalize on the accidental keystrokes of unsuspecting Internet users. Alias Encore puts a stop to this domain name fraud, dramatically increasing revenues as a direct result.

Alias Encore was founded in 2008 and is privately held. The company’s headquarters are in Aliso Viejo, California. For more information, please visit http://www.aliasencore.com.

CONTACT:

Media Relations
Alias Encore, Inc.
(866) 608-8202 phone
(866) 810-7656 fax
media@aliasencore.com
http://www.aliasencore.com

FreeCreditReport.com Wins 1,017 Domains in Largest Ever UDRP

November 13, 2009

The National Arbitration Forum (NAF) published a historic domain dispute decision late Thursday awarding 1,017 cybersquatting domain names to FreeCreditReport.com. The complaint was filed by ConsumerInfo.com, owner of FreeCreditReport.com, through a process called the Uniform Domain-Name Dispute-Resolution Policy (UDRP), and is believed to be the largest case in the ten years since the UDRP was first enacted. The complete decision is available here.

Interestingly, FreeCreditReport.com was represented in the case by a company called CitizenHawk, Inc., which is not a law firm as would be typical. CitizenHawk and other similar firms such as Alias Encore, Inc. specialize in the automated creation of UDRP complaints using proprietary software, enabling brand holders to enforce their trademark rights at an otherwise infeasible scale.

“The exhibits for this UDRP would have been thousands of pages long, making the case nearly impossible to construct manually,” said Graham MacRobie, CEO of Alias Encore. “Companies have been playing a losing game of Whac-A-Mole with cybersquatters for years, and this case serves as an excellent demonstration of the role automation can play in leveling the playing field by going after huge chunks of infringing names at once.”

Representatives for FreeCreditReport.com and CitizenHawk were not reached for comment.

The disputed domain names were all slight misspellings of FreeCreditReport.com (such as ereecreditreport.com), or they included FreeCreditReport spelled correctly within a longer domain (such as 1-800-freecreditreport.com). The respondent in the case is a firm called Netcorp LLC which had previously lost one other UDRP case in 2005. Unlike that previous case, Netcorp chose this time to represent itself rather than engage the services of a domain industry attorney such as Ari Goldberger or John Berryhill – an interesting and perhaps telling decision considering the complexity of the case.

Further complicating the case was a tussle over the perceived “generic” nature of the brand FreeCreditReport.com. Netcorp argued that “the disputed domain names are comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark.” Ultimately, NAF’s panelist deferred to the United States Patent and Trademark Office which had previously reviewed and approved FreeCreditReport.com’s trademark application.

It would seem that this decision sets or reinforces a fairly strong precedent that trademark holders may be entitled to, not only to the domain name that exactly matches their trademark, but also to a wide swath of other domain names including nearly every possible misspelling or other variation of that trademark, potentially even if the trademark is comprised of generic words.

Commission Junction Awards Alias Encore, Inc. Performer Status

November 4, 2009

FOR IMMEDIATE RELEASE:

Aliso Viejo, CA (November 4, 2009) – Alias Encore, Inc. announced today that it has been awarded Performer status by Commission Junction.

“Commission Junction is delighted to welcome Alias Encore to Commission Junction’s Performer  (CJP) Program.  The CJP program is designed for publishers who have a proven track record of delivering results, who work ethically within the CJ Marketplace and want to expand their affiliate relationships,” said Nicole Fini, Publisher Account Director at Commission Junction. ”We look forward to working with Alias Encore at the CJP level to increase their revenue potential and establish long-term partnerships.”

“We’re honored to become a Performer,” said Laura Thompson, Director of Business Development at Alias Encore, Inc. “Commission Junction has been a fantastic partner and we look forward to continuing the relationship and building on the success we’ve had so far.”

Alias Encore partnered with Commission Junction earlier this year, working closely with the Publisher Development team. “After seeking out and recruiting this publisher for management under the publisher channel development group, I quickly realized the potential their business had to offer in the affiliate space,” said Angela Mihalakopoulos, Business Development Manager / Publisher Channel Development at Commission Junction. ”Their team is extremely responsive, very engaged and was always open to our strategic suggestions.  They treated us like an extension of their team and offered full transparency to our advertisers.  They’re a valuable publisher and have a great offering for our advertiser clients.”

‘We’re thrilled,” said Graham MacRobie, President and CEO of Alias Encore, Inc. “We’re lucky to work with Commission Junction–a great company with great people–and we’re going to continue offering their advertisers the best typo domain-recovery service for the best price.”

About Commission Junction

Commission Junction (www.cj.com) provides advanced performance marketing solutions that help marketers increase online leads and sales. By facilitating strategic relationships between advertisers and publishers, Commission Junction leverages its proven expertise in affiliate marketing and search marketing to drive measurable results for clients.

About Alias Encore, Inc.

Alias Encore is squarely focused on helping companies increase highly qualified traffic to their websites through the strategic acquisition of misspelled domain names. It is no longer sufficient for a company to own only the domain name that exactly matches their trademark. This is because significant revenues are being surreptitiously diverted to competitors through literally millions of “typosquatting” sites that seek to improperly capitalize on the accidental keystrokes of unsuspecting Internet users. Alias Encore puts a stop to this domain name fraud, dramatically increasing revenues as a direct result.

Alias Encore was founded in 2008 and is privately held. The company’s headquarters are in Aliso Viejo, California. For more information, please visit http://www.aliasencore.com.

CONTACT:

Media Relations
Alias Encore, Inc.
(866) 608-8202 phone
(866) 810-7656 fax
media@aliasencore.com
http://www.aliasencore.com

Next Page »

Typosquatting Scan

 

Some websites have just a few misspelled domain names siphoning revenue away from them. Others have hundreds or even thousands. Enter a .com domain name to see a list of infringing sites along with screenshots.

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