DNS Business Development Workshop Course Overview This course is designed to provide a basic understanding of the Domain Name System (DNS) industry and business drivers to enable entrepreneurs to understand potential business opportunities in this industry. The course will focus on practical issues where appropriate, with case studies and listings of available resources and vendors in the industry. Ample time will be included for networking opportunities and identifying available resources for on-going assistance after the conclusion of the course. The course will occur over a 5 day period, with an early end on the last day to accommodate travel schedules

1. Domain Name Law Essentials
Clarke Douglas Walton
Walton Internet Law

2. Our Roadmap
• Popular Legal Remedies (UDRP & ACPA)
• Case Study
• 5 Minute Trademark Law
• Essential Tips

3. Resolving Domain Disputes
UDRP
– Uniform Domain Name Dispute
Resolution Policy (1999)
• Binding
arbitration
• Less formal rules
• No hearing
ACPA
- Anti-cybersquatting Consumer
Protect Act (1999)
• Federal court
• Very formal rules
about procedure
and evidence
• Live court
hearings required
Two Ways to Resolve Domain Name Disputes

4. Resolving Domain Disputes
Benefits and Costs
UDRP
• Benefits:
– Fast (decision in 60 days)
– Works against international
registrants
– Fixed Costs
• Filing fee: less than $1,500
• Attorney fees: $3,000 to
$5,000
• Downside:
– Only remedy is transfer of
domain name
– Can’t recover damages
– Can’t recover costs or
attorney’s fees
ACPA
• Benefits:
– Get domain name transferred
– Recover damages (up to
$100,000 per domain name)
– Recover court costs and
attorney fees
– Get emergency relief
(restraining order, injunction)
• Downside:
– Difficult to estimate costs
– Slow process (3-6 months is
minimum, can take years)

5. Case Study
• Brett’s instructions:
– “Clarke - you have unique first hand
experiences with this topic as a domainer.
I would like to see you use a case study to
prop up your central theme.”

6. Pubcon.com
• Pubcon.com domain name registered
September 22, 2003

7. Trademark Strength
• Trademark = Source identifier
• Not All Trademarks Are Created Equally
• 5 Levels of Trademark Strength
– Fanciful (very strong)
– Arbitrary (very strong)
– Suggestive (strong)
– Descriptive (weak)
– Generic (no strength at all)

8. Internet Examples
• Fanciful (very strong)
– Zillow, Expedia
• Arbitrary (very strong)
– Kayak, Amazon
• Suggestive (strong)
– Youtube, Moviebuff, Gamespot, SeatGuru
• Descriptive (weak)
– The Internet Movie Database, HomeLoanCenter
• Generic (no strength at all)
– Hotels.com, Lawyers.com

9. Who Has Priority?
• Date of first TM use in commerce
determines priority (in U.S.)
• Not date of TM filing
• Not date of TM registration

10. Pubcon.com Trademark
• Filed March 16, 2004
• Registered September 27, 2005
• First Use: June 30, 2001
– Common law rights began

11. Pubcon.com: Brett vs Clarke
Who wins?
• Pubcon.com strength?
– Probably suggestive
• Priority?
– Domain name registered by Clarke
September 23, 2003
– Brett’s First Use: June 30, 2001
• Bad Faith?
– Depends

12. Content on Domain Matters
• Suppose you register Venetian.com
– “Venetian” for casino services is arbitrary,
so it’s strong.
– “Venetian” for Venice, Italy is generic
(geographically descriptive)
– Publish content about Vegas casinos?
• You’re in trouble.
– Publish content about Venice, Italy?
• You’re probably fine.

13. Domain Name Law Essentials
– UDRP vs ACPA
– Not all TMs created equally
– Priority is key (date of first use in USA)
– Content affects rights
• Be careful about content on your parked pages

14. THANKS! QUESTIONS?
Clarke Douglas Walton
Clarke.Walton@WaltonWebLaw.com
Google: “Website Lawyer”