The 9th circuit recently held that the re-registration of a domain name was not the same as an initial registration for purposes of forming bad faith in a cybersquatting claim.  The defendant in GoPets Ltd.v Hise, 657 F.3rd 1024 (9th Cir. 2011) registered the domain name "gopets.com" for a school related marketing project.  After the registration, the plaintiff started a business called GoPets and tried to purchase the domain name from the defendant.  Because the registraiton occured prior to the founding of GoPets, the defendant did not have bad faith for cybersquatting purposes.  Later, the defendant transferred the domain name to his corporation and the plaintiff filed a cybersquatting case against the defendent.  

The court noted that the words "register" and "registration" are not defined in the AntiCybersquatting Consumer Protection Act.  The court went on to list the various scenarios which could arguably constitute a registration such as changing the administrative contact, making the registration private, switching registristrars and even renewing the registration.  The court opted not to permit such a broad view of the registration in holding for the defendant.  This contrasts Schmidheiny v. Weber, 319 F.3rd 581 (3d. Cir. 2003).  However, the Schmidheiny decision related to re-registration of a registration that occurred before the enactment of the ACPA and also related to registrations of the names of living people. 

    

California Governor Jerry Brown recently signed into law a California Labor Code addition called Employer Use of Social Media.  The new law is aimed at employers who request social media account access or content from employees or employment candidates.  It loosely follows the format of similar legislation in Illinois and Maryland. 

The core prohibitions of the California law are fairly basic.  An employer may not require or request an employee or applicant to disclosure username and password, access social media in the presence of the employer or divulge any personal social media.  However, the Californa law contains a singificant exception for employers.  The employer may request an employee to share social media if it is reasonably believed to be relevant to an investigation of imployee misconduct or violation of law.  This exception is more broad than Maryland's exception for securities fraud and trade secrets.  Illinois has no exception.  Also, the California exception does not apply to job candidates. 

One other interesting aspect of this law is that social media is defined as "an electronic service or account, or electronic content, including, but not limited to videos, still photographs, blogs, video blogs, podcasts, instant and text message, email, online services or accounts, or Internet Web site profiles or locations."  This definition appears to be broad enough to cover a wide variety of internet activities without regard to whether most people would view them as "social media" or not. 

Employers in California should review this new law and update their social media employment policies and practices accordingly.  Keep in mind that the exception does not specifically permit the employer to require the employee to divulge passwords.  Employers in other states should stay tuned for the expected wave of state and federal legislation in this area. 

    

The ever expanding list of available generic top-level internet domains (gTLDs) is about to get longer. Popular gTLDs include the familiar .com, .net and .org, but the total list has now grown to 22, including .info, .biz, and .pro. In addition, the proliferation of country-code top-level domains (ccTLDs) such as .co, .eu, and .uk has expanded beyond 300, leaving trademark holders with a seemingly overwhelming list of potential top-level domains to consider in terms of defensive registration or monitoring.

To add to the list, ICANN (the International Corporation for Assigned Names and Numbers) has begun accepting applications from private entities for new gTLDs. There are very few restrictions on what may comprise a new gTLD. This means that private entities will likely own and control gTLDs that consist of their own trademarks, such as .ford or .coke, and generic words that describe an industry, such as .car or .bank. Each applicant must meet certain technical requirements, file an application by April 12, 2012, and pay an initial fee of $185,000. There is no opportunity for trademark owners to exclude their marks from the list of potential new gTLDs. However, after the applications for gTLDs have been published, trademark owners will have the opportunity to object to the registration of a particular gTLD.

Although the prospect of proposing and hosting a new gTLD will not be a viable alternative for the vast majority of trademark holders, each new gTLD that is approved and ultimately adopted will add to the list of potentially infringing and problematic domains that must either be purchased and maintained as a preventative measure or monitored for potentially infringing uses.

Accordingly, it is increasingly important to have in place a trademark enforcement and domain name management policy that addresses the defensive registration of strategic gTLDs, and the appropriate monitoring of others. We generally recommend that clients consider the registration of key trademarks and trade names with the following TLDs: (i) the most popular generic top-level domains (.com, .net, .org, and .info); (ii) country-code top-level domains for any countries where significant business is currently conducted, or which are of particular strategic importance; and (iii) the most popular country-code top-level domains. The following is a recent "top ten" listing of ccTLDs based on number of registrations:

1. .de (Germany)
2. .uk (United Kingdom)
3. .nl (Netherlands)
4. .eu (European Union)
5. .cn (China)
6. .ru ( Russia)
7. .br (Brazil)
8. .ar (Argentina)
9. .it (Italy)
10. .pl (Poland)

Defensive registration is just one component of a comprehensive trademark enforcement and domain name management policy.

Elizabeth Tassi contributed to this post.

    

The always excellent TTAB Blog has published its compilation of the 37 precedential decisions from the Trademark Trial and Appeal board from 2011.  Blog post here.  Highlights include a decision finding the design of a bottle in the shape of a fist with a raised middle finger to be scandalous or immoral, and another finding that NKJV has achieved acquired distinctiveness for bibles. Also, noteworthy, rulings have been made in the new REDSKINS disparagement case (the previous case, based on essentially the same substantive grounds, was tossed by the U.S. Court of Appeals for the District of Columbia Circuit ultimately (in 2009) when it affirmed the lower court's ruling that the disparagement claims of the Native American plaintiffs were barred by laches.  In this case, the plaintiffs are American Indians who just recently reached the age of majority, the point at which the earlier case had determined that laches begins to run. 

    

Ever wonder what happens when a domain name expires?  If the domain name registration, reservation, renewal and expiration process seems a little murky to you, you are not alone.  The "expiration" process is particularly misunderstood (and complicated), and it is very helpful to know how it works, particularly when watching a parked domain, or one that is pending deletion, and determining whether to try and buy it from the domain owner, or put it on "back-order" with one of the registrars, or take some other action. 

There is an entire industry that does nothing but try to exploit expiring domain names, and the process and nomenclature is explained in excellent detail at this site. 

Here is a quick summary from the reference site (at least for .com/.net/.org/.info/.biz/.us. domains):

Generally speaking, once a domain expires, the owner has 1-75 days to renew it, and the costs associated with a renewal usually increase as the domain moves from Hold (Registrar-Hold) to RGP (Redemption Grace Period).

During the Hold and RGP stage, the DNS, e-mail and web services cease to work for the expired domain. The domain gets removed from the zone file and does not appear to resolve (cannot find server error is displayed in the browser).

Once a domain reaches the deletion stage in the cycle (also known as PendingDelete) it can no longer be renewed and is marked for deletion by the registry. There are approximately 35,000 domains that go through the PendingDelete cycle daily.

After the 5 day PendingDelete cycle (or if a registrar chooses to immediately delete a domain), a domain drops and once again becomes available for registration.

Here are some interesting facts about the domain drop cycle:

• 120,000 to 200,000 domains expire daily due to non-renewals. Many of these are renewed as soon as the registrant realizes that their e-mail or site no longer works.
• 25,500 to 60,000 domains drop (become available) daily as part of the regular drop cycle.
• Approximately 1.5 million domains are registered and dropped daily as part of domain tasting.
• The official drop time for .com/.net is between 11 AM and 2 PM Pacific time (domains are deleted in batches throughout this period).