Old Cybersquatting Tactic is New Again: A Case Study from the Banking Industry

In the early days of domain name disputes (that is, the mid-1990s), cybersquatters targeted trademark owners by registering exact trademarks in the .com top-level domain (TLD) -- often, because a trademark owner had not yet heard (or appreciated the potential) of the Internet. A writer for Wired magazine famously registered <mcdonalds.com> and, in an article in October 1994, wrote about how he struggled to educate the fast-food chain about domain names. "It's easy to find an unused domain name, and so far, there are no rules that would prohibit you from owning a bitchin' corporate name, trademarked or not," Joshua Quittner wrote almost 22 years ago, before most of the public really knew about domain names.

Indeed, many of the early decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) involved so-called exact-matches of well-known trademarks: <christiandior.com>, <encyclopediabrittanica.com>, <general-electric.com>, <baileysirishcream.com>, <hamburgerhamlet.com>, <stanleybostitch.com>, <greenbaypackers.com>, <southerncompany.com> and many, many more.

The Evolution of Cybersquatting

But then, as trademark owners woke up to the Internet, they proactively registered their primary trademarks as domain names if they were still available. Or, they used the UDRP or the courts to wrestle them away from cyberquatters. And, then even tried to get a step or two ahead of the cybersquatters by registering in less-popular TLDs such as .net and .org.

As a result, cybersquatting evolved. Exact-matches became less popular, and "typosquatting" -- that is, the registration of a domain name that contains a typographical variation of a trademark, such as <plaboy.com> and <wallstreetjouranl.com> -- took off. Cybersquatters also began to register domain names that contained words in addition to a trademark (such as <lexuschicago.com> and <gayebay.com>). None of these changes eliminated cybersquatting (indeed, the number of UDRP complaints continues to rise), they just changed the landscape.

Now, the arrival of hundreds of new TLDs is making the old form of cybersquatting new again.

The Case of comerica.mortgage

For example, Comerica Bank, which uses the <comerica.com> domain name (created September 1995) recently filed a UDRP complaint for the domain name <comerica.mortgage>.

According to the UDRP decision, Comerica is one of the 35 largest U.S. financial and bank holding companies, with more than $71 billion in assets with offices in Canada and Mexico, in addition to the United States. It began using the COMERICA trademark in 1982 and owns numerous United States registrations for the mark. In addition to using the <comerica.com> domain name, Comerica also wisely registered <comerica.net> and <comerica.org> (both created February 1998).

Despite its size and apparent Internet savvy, Comerica did not register <comerica.mortgage> when the .mortgage TLD was launched in 2014. While it's unclear why Comerica chose to pass on this domain name, someone else registered it and, according to the UDRP decision, "offered to sell the disputed domain name to [Comerica] at a price higher than what he paid for it" and also "redirect[ed] [it] to a website where Respondent offers other domain name names for sale."

Fortunately for Comerica, the UDRP panel had no problem finding that the bank satisfied all three elements of the domain name dispute policy, that is:

• The domain name <comerica.mortgage> is confusingly similar to the COMERICA trademark. Indeed, the panel wrote that "the addition of the '.mortgage' gTLD serves to enhance the likelihood of confusion because it references the field in which Complainant operates." (As I've written before, the TLD has increasingly become an important factor in some UDRP disputes. See, "When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?")
• The registrant of the <comerica.mortgage> domain name had no rights or legitimate interests in it because Comerica "ha[d] not licensed or otherwise permitted Respondent to use the COMERICA Mark, and... there is no evidence that Respondent has been commonly known by the disputed domain name. Further, the Panel finds that Respondent’s use of the disputed domain name to redirect to a website which Respondent is using to sell other domain names is not a bona fide use."
• The <comerica.mortgage> domain name was registered and used in bad faith because, among other things, the .mortgage TLD "references [Comerica's] business" and the registrant "intentionally attracts Internet uses to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark, and he commercially benefits from this confusion by offering domain names for sale at this website."

As a result, the UDRP panel ordered transfer of the <comerica.mortgage> domain name to Comerica, and Comerica now simply redirects it to its existing website at www.comerica.com.

Interestingly, however, Comerica does not control the exact-match of its trademark in other new TLDs, such as .money, .fund or .financial. Although these domain names have not been registered by Comerica, they also haven't been registered by anyone else -- which means that Comerica may find itself filing additional UDRP complaints in the future. Indeed, in addition to <comerica.mortgage>, Comerica also already has filed (and won) a UDRP complaint for <comerica.xyz>. (Although the .xyz TLD does not necessarily relate to the banking and financial services industry, it has proven to be one of the more popular new TLDs.)

What to Do

As the Comerica decisions make clear, cybersquatters are finding new opportunities in the new TLDs. And, Comerica is certainly not alone, as other trademark owners -- not only in the banking and financial services sector, but in virtually all industries -- need to pay renewed attention to how domain names affect their brands.

It['s still early in the launch of new TLDs, but cybersquatters often stay one step ahead of trademark owners. So, for those companies that fail to register their trademarks in the new TLDs and later find problems, the UDRP -- and, to some extent, the Uniform Rapid Suspension System (URS) -- should prove to be very helpful.

The Hope and Threats of New Domain Names for the Financial Services Sector

If a website uses a domain name containing the word "bank," is it really a bank? The answer may be as puzzling as the ancient thought-provoking philosophical question, "If a tree falls in a forest and no one is around to hear it, does it make a sound?" With the rising problems that banks and other financial institutions are facing online, the question is becoming increasingly important.

Fortunately, there's a (relatively) short answer to the bank domain name question. Unfortunately, it's like the answer to many legal questions: It depends.

It depends where in the domain name the word "bank" appears:

• If the word "bank" is a part of the second-level portion of the domain name, such as <bankofamerica.com>, then the corresponding website may or may not be for a real bank. (To be clear, the domain name I just cited as an example is indeed used by Bank of America -- a real bank.) That's because second-level domain name registrations in most top-level domain names (such as .com) are not restricted. In other words, anyone can register a second-level domain containing the word "bank" in the .com top-level domain.

• On the other hand, if the word "bank" is actually the top-level domain (TLD) -- that is, .bank -- then the domain name must be associated with a website for an actual bank or related entity. That's because the .bank TLD, operated by fTLD Registry Services (which also operates .insurance), is restricted. Specifically, fTLD's Registrant Eligibility Policy for .bank states that .bank domains are available only for "[s]tate, regional and provincial banks that are chartered and supervised by a government regulatory authority," or certain other qualified banks or bank-related entities.

The distinction is an important one.

That's because many domain names with the word "bank" in the second level are not registered by banks and, instead, have been used to conduct various scams. For example, the domain name <capitallbank.com> was used by a cybersquatter (not by Capital Bank) to "conduct a phishing scheme designed to obtain sensitive personal and financial information" from Capital Bank's customers.  Other domain names, such as <amgybank.com> and <td-bank-support.com>, have been used by cybersquatters to provide banking-related links that were not necessarily associated with the obvious trademark owners (that is, Amegy Bank and The Toronto-Dominion Bank).

Fortunately, all of the domain names in the preceding paragraph, which were once registered by cybersquatters, were transferred to the real banks through proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Real banks apparently are finding the .bank TLD attractive. For example, Badger Bank in Wisconsin is now using the domain name <badgerbank.bank> because " banking staff knew that instituting a .BANK domain name would help solidify its strategic plan of focusing on cybersecurity measures to better serve its customers."

But, not all of the new gTLDs are restricted, including many of those that might be attractive to banks or other financial service providers. For example, .creditunion is intended for use only by "organizations that have a nexus with the credit union sector." But .creditcard is unrestricted.

Given the long list of new gTLDs that are associated with the banking and financial services industries -- such as .accountant, .broker, .financial, .fund, .markets, .money, mortgage, .netbank and .trading (just to name some!) -- the potential for confusion (by both trademark owners and their customers) is apparent.

Additionally, many of the hundreds of other new gTLDs that have nothing to do with the financial services sector are being used by cybersquatters. For example, banks already have filed and won UDRP complaints for the domain names <dollarbankloancenter.xyz>, <citibank.porn>, <hancockbank.online> and <tdbank.email>.

Thus, it is apparent that the new gTLDs are providing both opportunities and significant new risks for banks and other financial service providers. As a result, these organizations must become even more vigilant in policing domain names that violate their trademarks , to protect their customers as well as the future of their ability to safely conduct business online.

The Growing Threat of Cybersquatting in the Banking and Finance Sector

The apparent cyber heist of of $81 million from the Bangladesh central bank's U.S. account may cause some people to question the security of online banking. While the online theft prompted SWIFT -- a cooperative owned by 3,000 financial institutions around the world -- to make sure banks are following recommended security practices, the incident also could have ramifications for banking customers worldwide. Indeed, the Bangladesh online banking break-in comes just as the World Intellectual Property Organization (WIPO) identified the banking and finance industry as the second-most-popular sector to file cybersquatting complaints in 2015. Nine percent of all domain name disputes at WIPO last year were filed by bank and finance owners, second only to the fashion industry.

WIPO identified the following banking and finance entities as among the most active pursuers of cybersquatters: Banco Bradesco, Bank of Scotland, Bloomberg Finance, Comercia Bank, Intesa Sanpaolo, Lloyds, Saxo Bank and Sydbank.

At the Forum, the second most-active provider of domain name dispute services, the list of banks that filed domain name disputes in 2015 is more U.S.-centric, including complaints by American Express, Bank of America, Barclays, Discover Financial Services, OneWest Bank, Regions, TD Bank and Wells Fargo.

Using UDRP and URS to Fight Cybersquatters

While most of these cases were filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), companies from the banking and financial services industries also are taking advantage of the new Uniform Rapid Suspension System (URS) to tackle registrations in the new generic top-level domains (gTLDs), such as .club, .guru, .services, .top, .wiki and .xyz. Morgan Stanley, Principal Financial Services and PayPal have all used the URS to their advantage.

In many cases, the domain name disputes initiated by banks involve phishing scams, that is, where the cybersquatter tries to trick a customer into providing his or her account information. For example:

• In one Wells Fargo case, involving the domain name <welilsfargo.com>, the UDRP panelist found that the registrant of the domain name was "seeking to deceive Internet users by providing a web site containing a near identical copy of [Wells Fargo's] web site and seeking to fraudulently obtain personal information from Internet users through a phishing scam."

• Similarly, in a UDRP case for <lloydsprivatecommercialfinance.com>, Lloyds Bank said that "[t]he disputed domain name is used to host a website appearing to offer financial services, but there is no proof there of any delivery of such services, nor any mention of any official authorization, as would be mandatory. The Respondent appears intent on making unjustified profits or defrauding consumers to reveal personal or proprietary information."

Phishing, Crimeware and Education

These banking-related cybersquatting cases are consistent with a general increase in phishing scams overall: The non-profit Anti-Phishing Working Group (APWG) reported that the financial services industry was the second-most-targeted industry sector in the fourth quarter of 2015 (behind only the retail/service sector). The APWG also notes that access to financial-based websites is the most common target for "crimeware" attacks, which it defines as "data-stealing malicious code designed specifically to be used to victimize financial institutions' customers and to co-opt those institutions' identities."

Although online banking is now commonplace, some customers continue to fall for some scams. Indeed, the Federal Trade Commission warns consumers that they should never click on links in email messages requesting financial information. And individual banks send similar messages. For example, Bank of America cautions their customers about the common "phony email ask[ing] you to go to a website that looks like a Bank of America site, but is actually a site the criminal has set up asking you to provide your personal account information."

Despite these warnings, phishing and crimeware attacks targeting the banking and finance sector are not likely to disappear anytime soon, as the reports from WIPO and the APWG make clear. While banks and financial service providers should continue to educate customers, tackling cybersquatters through the UDRP and URS remain important -- and very effective -- tools to ensure that online banking remains safe.

What is the Intellectual Property Constituency (IPC)?

As a longtime member of ICANN's Intellectual Property Constituency (IPC), I’m impressed by the important work that this group does on behalf of trademark owners worldwide (as I've written before). While some die-hard IPC members spend countless (and, often, thankless) hours working virtually and in-person (at ICANN's global meetings) for the constituency, I find it very educational and worthwhile to participate on an ad-hoc basis. Thanks to active email discussion lists and remote participation technology, the IPC offers numerous opportunities to get engaged with important issues affecting, primarily, the intersection of trademarks and domain names.

For example, at the recent ICANN meeting in Marrakech, Morocco, the Generic Names Supporting Organization Council (a part of ICANN's policy development entity) approved a working group to review all rights protection mechanisms in the generic top-level domains (gTLDs), an area that is of obvious importance to IPC members, who will certainly contribute greatly to its work.

Still, despite all of the the IPC's significance, I often find that many people are simply unaware of what this constituency is -- or, at least, what it does and who drives it. Fortunately, the IPC recently published an updated "one-pager" (well, it's really a 2-page PDF document) about itself, which provides some great introductory information.

Among other things, the document makes clear that the IPC is "primarily focused on trademark, copyright and related intellectual property rights, and their effect on and interaction with the domain name system (DNS)."

The IPC's "key" issues, as described in the document, are as follows:

• WHOIS/registration directory services, including WHOIS accuracy, availability of WHOIS information, translation and transliteration of WHOIS information, privacy and proxy services, and advancements in “next generation” registration directory services.
• Reviews of ICANN’s New gTLD Program including competition, consumer trust and consumer choice, and planning for subsequent rounds.
• Reviews of rights protection mechanisms (RPMs) for the New gTLD Program and for “legacy” gTLDs, including the Uniform Rapid Suspension System (URS), the Trademark Clearinghouse (TMCH), and the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
• Internet governance, including the IANA Stewardship Transition and the associated process to enhance ICANN accountability.
• Issues related to geographical indications and other geographic terms.
• Abuses and concerns related to the New gTLD Program, both overall and with specific registries and new gTLDs.
• Strong, consistent enforcement of ICANN’s contracts with registries and registrars, especially new provisions regarding the protection of intellectual property rights.

I recommend the IPC one-pager for anyone interested in learning more about these issues, including those who might want to join the constituency and further contribute to the protection of intellectual property on the Internet.

Beware of YouTube's 'Community Guidelines'

As an attorney who spends every day helping clients protect themselves online, imagine my surprise when I received an email from YouTube with the subject line, "Your video has been removed from YouTube." And the email was intended for me, not for one of my clients. Amazingly, the video that YouTube removed was one I created -- about how to protect yourself online! It was a recording of a webinar I had recently presented, titled "Domain Name Disputes: What Happened in 2015 (and How to Protect Yourself in 2016 and Beyond)." The video had been published on YouTube for several days before I included a link to it on my GigaLaw blog. Within a few hours, YouTube removed it.

Why? Good question.

What the 'Community Guidelines' Forbid

YouTube's email simply said:

The YouTube community flagged one or more of your videos as inappropriate. After reviewing the content, we’ve determined that the videos violate our Community Guidelines.

Naturally, I "Googled" "youtube community guidelines" (since YouTube's email perplexingly did not contain a link to them), which led me to a page warning users, "Don't cross the line." The page identifies the following types of taboo videos:

• Nudity or sexual content
• Harmful or dangerous content
• Violent or graphic content
• Copyright
• Hateful content
• Threats
• Spam, misleading metadata, and scams

Of course, these categories are just shorthand for more complete descriptions. Reading the headings alone isn't very informative. For example, most videos are protected by copyright law -- the question is whether the user who posts the video has appropriate rights to do so.

In any event, it was impossible even to imagine which of these categories might have been implicated in the decision to remove my video. After all, I (and my co-presenter) created all of the content in the video, which consisted solely of PowerPoint slides and our narration. No music, no movie clips, no photographs. Certainly no nudity (though there is one slide that discusses the impact of adult-related domain names -- .adult, .porn, .sex and .sexy -- on trademark owners). Nothing that could possibly be considered harmful, dangerous, hateful (I've served as a member of the ADL Anti-Cyberhate Working Group) or threatening. And nothing related to spam, scams or the like. After all, these are the issues I counsel my clients to avoid.

My Successful Appeal to YouTube

So, embarrassed that my webinar video had been taken down so soon after I informed my blog readers that it had been posted, I immediately (within 17 minutes) responded to YouTube, via their "appeal" process, which essentially consisted of a short form. I had room for perhaps a sentence or two -- nothing that would allow for much explanation or legal argument.

And then, about 15 hours later, I received another email from YouTube:

After further review, we've determined that your video doesn't violate our Community Guidelines. Your video has been reinstated and your account is in good standing.

Good news, of course. Though, in the maddening interim, I had replaced the video link in the blog post with a new copy of my webinar video, this time hosted on Vimeo instead of YouTube. (There are plenty of arguments out there about which service is better, but I won't digress.) I had become impatient and did not want the entire business day to pass with the video offline.

Although I was happy that YouTube had restored the video, I remained perplexed. Why was it taken down in the first place? Why wasn't I given an opportunity to respond to any complaints before it was taken down (as is common in copyright-related situations under the Digital Millennium Copyright Act)? And why was it reinstated?

So, I asked YouTube. Via email. Twice. But, of course, no answer.

YouTube's lack of a response is frustrating, but understandable. After all, Google reported last year that it receives 2.2 million takedown requests every day.

Lessons About Online Publishing

While, in a sense, all's well that ends well, the experience has certainly left me frustrated -- and more empathetic to website publishers who have to deal with issues like this all of the time.

So, what did I learn? At least three important lessons:

• Using a free service (such as YouTube) often means that customer service will be lacking, or absent. While I was frustrated that YouTube's decision seemed arbitrary, I had few grounds for complaint, and certainly no real person to whom I could complain.

• Web hosting services typically give themselves broad discretion to take down their users' content. Even Vimeo, which offers paid services, reserves for itself the right to "suspend, disable, or delete" a user's account "if Vimeo determines" that a user has violated its agreement (which, like YouTube, has its own guidelines).

• Always have a backup plan. Fortunately, YouTube quickly (and rightly) restored my video, but not before I reposted it with Vimeo. While I was able to do so as soon as possible, there was some true "downtime" where users couldn't view the video. With better planning, I could have replaced the video even more quickly.

[Webinar Replay] Domain Name Disputes: What Happened in 2015 (and How to Protect Yourself in 2016 and Beyond)

Click above for a replay of the GigaLaw webinar, "Domain Name Disputes: What Happened in 2015 (and How to Protect Yourself in 2016 and Beyond)." The webinar was presented live on February 17, 2016. In this webinar, Doug Isenberg of GigaLaw and Troy Fuhriman of MarkMonitor provide an overview of domain name disputes in 2015, including important trends and new developments. The arrival of hundreds of new top-level domains (such as .xyz, .club and .email) has created new opportunities for cybersquatters, as trademark owners face new threats online. Learn how the Uniform Domain Name Dispute Resolution Policy (UDRP) and the new Uniform Rapid Suspension System (URS) can help trademark owners protect their brands on the Internet.

Playing time is approximately one hour.

Is the URS Dying?

The much-maligned Uniform Rapid Suspension System (URS) is not only failing to catch on -- it's actually starting to fade. Once envisioned as a popular rights-protection mechanism for trademark owners under the new generic top-level domain names (gTLDs), the URS instead is seldom used. In fact, despite the growth in new gTLD registrations, the URS is in decline.

As the chart above clearly shows, the number of URS complaints filed at the Forum (formerly the National Arbitration Forum) -- the most popular URS service provider -- dropped 13% last year, from 242 complaints in 2014 to 211 complaints in 2015. (The total number of disputed domain names in those URS complaints effectively remained unchanged, from 258 to 257.)

At the Asian Domain Name Dispute Resolution Centre, the story is even more dramatic, with only 7 URS complaints decided in 2015 -- a 59% dip from the 17 URS determinations in 2014.

And, when you consider that the total number of domain names registered under the new gTLDs actually increased 200% from the end of 2014 to the end of 2015, the decline in URS activity is especially significant. Said another way: In 2014, one in every 14,326 new gTLD registrations was subject to a URS complaint, but in 2015 the ratio dropped to only one in 51,378.

While it might be tempting to think that the paltry number of URS complaints being filed is an indication that cybersquatting is becoming less rampant, the overall number of domain name disputes tells a different story, given the 4.5% spike in cases at WIPO and a 23.9% increase in the total number of disputed domain names at the Forum last year.

So, why is the URS so unpopular?

As I've written before, the reasons are many:

• The URS is still a relatively new dispute policy and, therefore, is not nearly as well-known as the Uniform Domain Name Dispute Resolution Policy (UDRP).  (Indeed, WIPO -- the largest provider of all domain name dispute services -- does not accept URS cases.)
• The URS only allows a trademark owner to temporarily suspend a domain name (whereas the UDRP allows a trademark owner to obtain a transfer of the domain name) and, therefore, is often a less attractive option.
• The URS has a high burden of proof, which, combined with the strict word limit and lack of much precedent, can make it challenging for a trademark owner to prevail. (Indeed, the URS itself makes clear that it is "not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.")
• Despite the increase in the number of new gTLD registrations, new gTLDs in general are not popular with the public overall -- so trademark owners may consider cybersquatting in the new gTLDs a threat not always worth pursuing.

Still, the URS is a good option for trademark owners under certain circumstances, but if the current trend is any indication, the UDRP will remain the preferred domain name dispute policy.

Is the DMCA an Effective Way to Take Down Infringing Content?

As promised at an end-of-the-year (2015) announcement, the U.S. Copyright Office has now launched a comment submission process about the "safe harbor provisions" of the Digital Millennium Copyright Act (DMCA). The DMCA is often used by copyright owners to get infringing content -- images, text, videos, music, even software -- removed from problematic websites.

Section 512 of the DMCA, commonly referred to as the "safe harbor" or "take-down" provision of the law, provides an incentive for "service providers" such as website hosting companies and online publishers (including those who accept user-generated content) to remove infringing content posted by their customers under certain circumstances, including a proper notice from the copyright owner.

Since the arrival of the DMCA in 1998, website operators can avoid liability for their customers' infringing activities if, among other things, they appoint an agent to receive notices and "expeditiously... remove, or disable access to, the material that is claimed to be infringing."

Through the years, Section 512 of the DMCA has been both praised and criticized by just about everybody -- copyright owners, website operators, publishers, bloggers and more.

There's no doubt that Section 512 is frequently invoked by copyright owners. For example, Google has reported that it receives 2.2 million take-down notices every day.

But also, a controversy over music in a personal video on YouTube has been litigated for years, with the U.S. Court of Appeals for the Ninth Circuit ruling last year that copyright owners must consider the "fair use" doctrine before submitting a take-down notice.

A lot has changed since the DMCA was enacted 18 years ago. Indeed, in a Federal Register notice about the comments, the Copyright Office said:

Today, copyright owners send takedown notices requesting service providers to remove and disable access to hundreds of millions of instances of alleged infringement each year. The number of removal requests sent to service providers has increased dramatically since the enactment of section 512....

While Congress clearly understood that it would be essential to address online infringement as the internet continued to grow, it was likely difficult to anticipate the online world as we now know it...

As a result, website operators can become overwhelmed with take-down notices while copyright owners of all sizes often find the process unpredictable and frustrating.

So, the Copyright Office wants to know (among many other things):

• Are the section 512 safe harbors working as Congress intended?
• How effective is section 512’s notice-and-takedown process for addressing online infringement?
• Does the notice-and-takedown process sufficiently address the reappearance of infringing material previously removed by a service provider in response to a notice?
• How effective is the counternotification process for addressing false and mistaken assertions of infringement?

The Copyright Office is accepting comments on these and other questions until March 21, 2016. The answers it receive could shape the future of fighting infringement on the Internet.

However, unless and until anything changes, copyright owners and website publishers will continue to rely on the DMCA's notice and take-down provisions as a popular method for coping with infringing content online.

When Companies Merge, Cybersquatters Emerge

Big corporate mergers sometimes create big domain name headaches. Aside from increasing the burden and expense of managing a potentially extra-large portfolio of domain name registrations, a prominent merger can alert cybersquatters about new opportunities. This is especially true when the merger is -- as is usually the case -- announced before completion and when the deal is quite large.

For example, the recently announced $15.4 billion deal between Newell Rubbermaid and Jarden will, as The Wall Street Journal reported, combine such high-profile brands as Sharpie markers and Baby Jogger strollers with Rawlings baseball gloves and Mr. Coffee machines. And the $16.5 billion deal between Johnson Controls and Tyco will bring together prominent brands from the automotive and HVAC industries with security and fire-suppression products.

Big corporate mergers are nothing new, of course. But companies are wise to consider important domain name issues as a part of the process.

Many well-known companies have failed to register domain names that contain obvious trademark combinations created by a merger. In many cases, the companies resorted to filing complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP) to obtain control of those domain names:

• Before Chevron and Texaco announced that their merged company would be known as "ChevronTexaco," a cybersquatter registered the domain names <chevrontexaco.info> and <chevrontexaco.org>. In finding that the registrant acted in bad faith, the UDRP panel wrote: "Despite Respondent’s protestations that it had no idea that Complainant was going to choose the name CHEVRONTEXACO for its merged company, Respondent admits that it was fully aware that both marks were registered trademarks of the Complainant. Further, proof submitted by Respondent shows that he closely monitored and was fully aware of the merger activities of the Complainant, and of the likelihood that CHEVRONTEXACO would be used as Complainant’s name and mark."

• On the same date that information leaked about a merger between Thermo Electron and Fisher Scientific, a cybersquatter registered the domain names <thermofisherscientific.com> and <fisherthermo.com>. In their UDRP complaint, the companies argued that the registrant of the domain names was "opportunistically engaged in bad faith registration," and the panel agreed -- calling the timing of registration "a compelling indication of bad faith."

• Not all merger-related domain name issues involve well-known global corporations. In 2005, according to a UDRP decision, the Nordic media "widely reported" that a company in Finland known as Orion Corporation  "planned to demerge into two separate companies, one of which would be Oriola-KD Corporation" -- which promptly encouraged one cybersquatter to register the domain name <oriola-kd.com>. The UDRP panel said the domain name registration was nothing more than "an opportunist act by an alert entrepreneur with a view to making a profit."

These same issues arise not only during corporate mergers but also when information about highly anticipated products is leaked. For example, a cybersquatter registered the domain name <amazonfirephone.us> only "days after publication of an article on the tech website BGR under the headline, 'Insider reveals launch timing and specs for mysterious Amazon smartphone,' and the same day on which Complainant filed applications to register the trademark AMAZON FIRE with the USPTO [U.S. Patent and Trademark Office]."  (Disclosure, I represented Amazon.) The dispute panel called this "opportunistic bad faith."

While all of these disputes ultimately resulted in transfers of the relevant domain names to their trademark owners, the legal proceedings created expenses and delays.

Of course, it's impossible to anticipate every possible trademark combination, typo and top-level domain name that will lead to a dispute; so, it's impossible to avoid every potential cybersquatting problem created by a merger or new product. Fortunately, when those problems inevitably arise, trademark owners can use the UDRP and other dispute policies to reclaim their domain names.