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Domain Names and Trademarks: How to Get Your Website Name Sorted

 

Turns out being John Malkovich isn’t all it’s cracked up to be.

One of the first thing all new businesses do today is register a domain name. Oftentimes the selection of the online identity even figures significantly into choosing the name of the business itself. But what if you’ve already selected the perfect name only to find out someone already has it registered? You actually have a lot more options than you probably think.

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Option 1: Is It For Sale?

Seems obvious and intuitive, right? Well, it may be a bit more complicated than you think. If the domain registrar’s site (like godaddy.com) says the name is not available, the next step is to pay a visit to the site. If the address doesn’t lead anywhere or what you see doesn’t look like a legitimate business there is a good chance you and the owner can make a deal. If, however, it looks like someone is legitimately using the site it may be time to move onto the other options.

Next — finding the owners. You can do this by conducting a Whois search on ICANN’s website (ICANN is the governing body of the internet and stands for the Internet Corporation for Assigned Names and Numbers). The search results will either provide the contact information for the owner (or registrant) or designate that the owner has elected to use a privacy shield. In most cases, this is the time to call in the professionals. Many registrars offer a brokerage service where they will reach out to the owners of the name you want and try to make a deal. While this is usually going to be accompanied by a fee, an experienced, impartial party is more likely to commence a deal than someone who is emotionally involved.

If the broker is able to make a deal, your business is off and going. If the broker can’t make a deal, consider the following options.

 

Option 2: Pick a New Name

It sounds so simple, but in practice, unless you’re brainstorming and searching godaddy.com at the same time, you’ve probably already invested something in your company’s name, even if it’s only emotionally. However, in some circumstances it may be the right move, though if you’ve already invested in the business name, probably only as a last resort.

 

Option 3: Pick a New gTLD

Sure, everyone expects a web address to end in ‘dot-com,’ but what if I told you it didn’t have to. Today there are literally over a thousand other options. While none carry the same cultural weight as ‘dot-com,’ they are usually cheaper and certainly more widely available than ‘dot-coms.’ These so called ‘not-coms’ can also give customers more information about your business. For example, if I registered ‘catherine.plumbing’ it would be clear that this site is affiliated with Catherine the plumber, not Catherine the electrician. With so many options, it is unlikely your company’s name is taken in every single one, and you can probably even find something that represents your business better than a ‘dot-com’ could.

One potential drawback to this option is that people are unfamiliar with these new ‘not-coms’ and are potentially skeptical of their legitimacy. However, because there are a limited number of ‘dot-com’ addresses available, eventually internet uses will come to accept these new endings and selecting one now could put you ahead of the curve.

 

Option 4: UDRP

At this point, poor John Malkovich still might not have found any relief, so we turn to legal remedies. ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) provides that if someone has, in bad faith, registered your trademark, or something confusingly similar to your trademark, and that person does not have any legitimate interest in the domain name you may bring a claim of cybersquatting in an administrative proceeding against them in order to recover the domain name, but not monetary damages. The most difficult portion of this test to satisfy is the requirement that the domain was registered in bad faith. To prove this, the UDRP directs the administrative panel to look to facts that indicate:

• the individual has registered the domain with the purpose to sell the name to the owner of the trademark for more than the original cost

• the individual registered the name in order to prevent the owner of the mark from obtaining the mark

• the individual registered the name in order to disrupt a competitor’s business, or

• the individual has used the name to attract internet traffic away from the trademark holder’s site by creating confusion about the true source of the site.

This means that a competitor who registers your company’s name (or something confusingly similar), in which you have either common law or statutory trademark rights, can be forced to hand it over. The UDRP also protects against, so-called, domain trolls. These trolls buy up domain names with the intent to sell them to legitimate users for exorbitant amount.

Once you conclude that you have been the victim of cybersquatting (hopefully after consulting an attorney), you must complete a UDRP Complaint and file it with the World Intellectual Property Organization (WIPO). The WIPO has available a model complaint that can serve as a guide to your filing. If the complaint is not deficient the registrar will put a lock on the domain name and a trial will be held before a panel of moderators, who will determine the winner. While this process is considerably faster and less expensive (because it is arbitration, not litigation), the most the WIPO can do is transfer to you the domain name, it cannot award monetary damages.

 

Option 5: ACPA

The Anticybersquatting Consumer Protection Act (ACPA) (15 U.S.C. §1125(d)) provides relief in very similar situations as the UDRP. As under the UDRP, one must show that the registering individual’s registration was in bad faith, the infringed trademark was distinctive, and that the domain name was the trademark exactly or just confusingly similar. When determining whether the domain name has been registered in bad faith, the statute directs courts to look to many more factors than the UDRP does. Because the statute does not limit the appropriate evidence for determining bad faith, a judge may consider basically anything deemed relevant. If, however, the registrant had a reasonable belief that her use was fair use or otherwise lawful the statute precludes a finding of bad faith.

The most significant advantage of pursuing a claim under the ACPA is that the judge is able to award monetary damages. However, this method is almost certainly going to take longer and cost more than a proceeding under the UDRP. Because of these costs this option should almost always be a last resort.

By now you have learned more about domain names than you ever wanted to know. But hopefully you’ve also learned the importance of protecting your company’s name online and what you can do if your protections fail.

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Donald Trump and Start-Ups

Hillary Clinton received 64 million (and counting) votes in the 2016 Presidential election and one of the driving factors behind that was the uncertainty of policies in a Trump presidency. However, as the dust settles and Americans face the inevitable, we need to start to look at exactly what Trump’s America is going to look like. This post discusses the potential changes Trump’s policies have in two major areas of start-up law: trade and immigration. Many worry that the broad, sweeping language of Trump’s campaign does not bode well for Silicon Valley.

 

Potential Trade Impact

A large portion of Trump’s campaign was spent attacking U.S. trade policies — including the North American Free Trade Agreement (NAFTA) and the Trans-Pacific Partnership (TPP) — and promising to slap high tariffs on (mainly Chinese) imports. The reneging of trade agreements and the imposition of high tariffs could have potentially devastating effects on Silicon Valley. The tech industry is very reliant upon cheap labor in Asia (including China, Vietnam, and Taiwan) to mass produce all components for smartphones, robots, computers, and tablets. An iPhone 7 is currently costs a minimum of $649 (plus tax) and one can only imagine how a steep tariff or forced manufacturing in the U.S. would affect the price. After all, the consumer will surely bare the cost of Trump’s policies. As CNN Money reports, manufacturing jobs pay an average of $20.17/hour—almost three times the federal minimum wage of $7.25/hour. Another issue with the promise to bring manufacturing jobs back is that those jobs are not great jobs to begin with—with manufacturers earning a little over $53,000 per year, putting them firmly in the lower middle class. Compare this to workers in China who, according to China Labor Watch, earn about $750/month with overtime.

Even though NAFTA, enacted in 1994, actually increased the amount of manufacturing jobs in the United States, Trump is correct about manufacturing being drawn away from the U.S. CNN Money reports that the U.S. has lost 5 million manufacturing jobs since 2000. However, this is a general trend that goes back to the 1960s. At that time, manufacturing jobs made up 24% of the labor market; this decreased to 19% in 1980; to 13% in 2000, and now to just 8% in 2016. However, the problem with Trump’s thesis is that technology has taken on a huge role in the manufacturing sphere — with robotic manufacturing becoming more and more the trend and the jobs associated with those robots requiring more and more education — leaving those who are not educated even less likely to find jobs.

This trend has even taken place in China where we see companies like Foxconn Technology, best known for their mass production of Samsung and Apple parts, replacing as many as 60,000 workers with robots in just one factory alone. As the Washington Post explains, “[This] is the natural dynamic by which market economies become richer as productivity improves. Improvements in agriculture productivity led to a wave of migration of farm workers to cities, where they provided the manpower for an industrial economy that eventually became so productive that we could afford to buy more health care, education, and yes, government.”

In short, Trump’s promises to limit trade are going to be more helpful as campaign rhetoric than actual policies. Manufacturing in other countries gives U.S. consumers and businesses access to low priced goods, which in turn drive the price of those goods down in the U.S. market. These policies have a chance to have a devastating impact on the American economy as a whole, but especially for Silicon Valley technology hardware firms.

 

Immigration and Visas

Another one of Trump’s main issues was immigration; more specifically, the need to limit future immigration and reverse past immigration. Silicon Valley as a whole has pushed hard to expand the use of H-1B visas beyond the 85,000 cap. The H-1B visa is a non-immigrant visa that allows U.S. companies to employ “foreign graduate level workers in specialty occupations that require theoretical or technical expertise in specialized fields such as in IT, finance, accounting, architecture, engineering, mathematics, science, medicine, etc.” To obtain an H-1B visa, an employer must offer a job to the worker and apply for a H-1B petition with the U.S. Citizenship and Immigration Services.

Silicon Valley relies heavily on immigrants — according to Bloomberg News, over 50% of U.S. tech startups valued at $1 million or more have at least one immigrant founder. Additionally, immigrants are heavily involved in the workforce in Santa Clara and San Mateo counties, which are prominent in Silicon Valley. Bloomberg reports that over two-thirds (67.3%) of the workforce in computer and mathematics fields are foreign-born, 60.9% in architecture and engineering, 48.7% in natural sciences, 41.3% in medical and health services, 41.5% in financial services, and 42.7% in other occupations. In short, immigrants make up a substantial portion of all workforce areas in Silicon Valley.

This is in addition to the so-called “startup visas,” which the Obama Administration pushed through without Congress. These visas are given to entrepreneurs who own at least 15% of a U.S. startup, and who can demonstrate the company’s growth potential, have investments from qualified U.S. investors, and provide a “significant public benefit” to the U.S. Visas are granted for two years, but the recipient can apply for an additional three years as the company proves its benefit to the American public. The recent announcement of these startup visas was well received in the tech world.

Trump has flip-flopped back and forth on whether H-1B visas are a way to bring in skilled workers or a way to bring in cheap international labor. According to the Verge, workers on H-1B workers had a median salary of $75,000 as of two years ago. In the Verge, Economist Rob Atkinson argued that the most likely outcome in a Trump White House is that “H-1B visas “will be restricted, limited, and harder-to-get” and that tech companies will “have to go through more hoops to prove there’s not an American that can get the job.” Trump’s tough talk on immigration and handing visas to skilled workers could eventually have the effect of sending jobs outside the country. If the U.S. government prevents Amazon and Microsoft from hiring the best engineers, it is only logical that they might look to set up bases in other countries (such as Canada) where their access to the world’s talent pool would not be limited.

 

Conclusion

Donald Trump’s rhetoric regarding trade and immigration in his campaign have many worried about the impact his policies will have in Silicon Valley. Silicon Valley (and the tech industry as a whole) rely heavily on cheap manufacturing abroad and imported brain power to fuel the tech industry. A fight to keep manufacturing alive in America despite its inevitable death could just wind up costing the U.S. in the form of higher priced goods. And an attack on immigration fueled by the H-1B visa could “brain drain” the U.S. and drive some of the most innovative minds (and their companies) away from the U.S.

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Updates to Michigan’s Legislative Battle to Permit Ride-sharing Statewide

The Michigan House of Representatives failed to pass on Wednesday HB 5951 which would have permitted ride-sharing companies like Uber and Lyft to operate in Michigan and preempted any more-restrictive local regulations.  The House may take up the bill again today.

The Michigan House of Representatives failed to pass on Wednesday HB 5951 which would have permitted ride-sharing companies like Uber and Lyft to operate in Michigan and preempted any more-restrictive local regulations. The House may take up the bill again today.

We recently overviewed Michigan’s proposed legislation, HB 5951 that would effectively allow ride-sharing services like Uber and Lyft to operate statewide by preempting local regulations. Here is a quick update to the status of this proposed legislation.

Michigan’s House of Representatives Fails to Pass HB 5951 on Wednesday

As reported by MLive, Michigan’s House of Representatives did not pass HB 5951 yesterday.  A House committee approved the bill last week and sent it to the House floor for a vote.  The bill would permit ride-sharing services to operate in Michigan provided they met certain requirements (outlined here) that are largely consistent with Uber’s current practices.

Yesterday, the House failed to pass the bill.  The bill is still alive, however.  Here is what happened, as outlined in the Journal of the House of Representatives for yesterday’s session.

  • The House made certain changes to the bill, including exempting from Michigan’s Freedom of Information Act any list of ride-sharing drivers provided to the state as required by the bill.
  • An amendment was proposed, but failed to pass, that would allow local municipalities to still pass their own ride-sharing regulations, even those more restrictive than state law.  This would effectively strip HB 5951 from having its primary impact (of having uniform state-wide requirements for ride-sharing services).  In particular, the amendment stated:

    Sec. 11. (1) This act does not prohibit a municipality or a group of municipalities that form an authority to regulate transportation network companies under the municipal partnership act, 2011 PA 258, MCL 124.111 to 124.123, or the public transportation authority act, 1986 PA 196, MCL 124.451 to 124.479, from adopting a rule, ordinance, or resolution that is more restrictive than this act.

  • When at least 50 representatives voted against the bill’s passage, the House passed on the agenda item.
  • The House will reconvene at 10am today, December 11, and may take up the bill again.  You can watch a live webcast of today’s House session here.

Opposition from Insurance Industry

Michigan's insurance industry continues to oppose HB 5951.

Michigan’s insurance industry continues to oppose HB 5951.

The insurance industry continues to vigorously oppose the bill in its current form, as laid out in its December 9 letter to the House.  One of their primary complaints is the gap in coverage for a ride-sharing driver who is on duty, but not currently carrying a passenger.

According to the executive director of the Insurance Institute of Michigan, HB 5951 leaves a gap in coverage that “may leave drivers and passengers of ride sharing companies at financial risk.”

In the meantime, all eyes will be on the House floor today to see if an agreement can be reached to allow HB 5951 to pass a House vote.

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Uber’s Regulatory Drama Continues: Portland Sues Uber

The City of Portland sued Uber on December 8 seeking to enjoin Uber from operating in the city limits.

The City of Portland sued Uber on December 8 seeking to enjoin Uber from operating in the city limits.

Yesterday’s post discussed Michigan’s proposed bill HB 5951 which would implement state regulations permitting ride-sharing services such as Uber and Lyft to operate in the state of Michigan provided they met certain regulations that are largely consistent with Uber’s existing practices.  That bill would preempt various city regulations (such as Ann Arbor’s), some of which conflicted with Uber and Lyft’s existing practices.  Just a few days after Michigan’s house committee approved HB 5951 and recommended the house pass the bill, a strikingly different approach has been taken in Portland, Oregon.

City of Portland v. Uber

On Monday, December 8, the City of Portland sued Uber seeking to enjoin Uber from operating in the city of Portland.  This lawsuit comes just days after Uber began operating in Portland on Friday, December 5.  The conflict involves Portland City Code Chapter 16.40, which requires as follows:

  • “for-hire transportation” drivers must obtain a “for-hire transportation” permit
  • for-hire vehicles must have certain decals and plates
  • taxicabs must adhere to certain fare and meter rates
  • taxicabs must adhere to certain regulations related to wheelchair accessibility
  • for-hire vehicles must maintain certain levels of insurance
  • taxicabs must maintain a dispatch system in operation 24 hours/day
  • taxicabs must service city-wide 24 hours/day, 7 days a week and accept any request received within the city
  • taxicab companies must have at least 15 cabs in their fleet and have at least 2/3 of their fleet in service at all times
  • for-hire vehicles must pass regular inspections
  • for-hire vehicles must be equipped with digital security cameras

According to the City of Portland’s complaint, which can be read here, Uber violates Portland City Code because it:

  • does not hold a valid company permit
  • all prospective Über customers must first download the Uber app and enter into an online agreement under terms dictated by Uber, including a waiver of any and all liability to Uber
  • the customer must provide credit card information to Uber, which is charged, rather than having drivers collect a fare from the customer
  • customers hail an Uber vehicle through the Uber app instead of a human dispatcher
  • the Uber app calculates fares based on time and distance rather than through a certified taxi meter
  • Uber’s drivers and vehicles are personally insured, and Uber does not require its drivers to purchase commercial at insurance
  • Uber does not require its drivers to be certified by the City of Portland
  • Uber’s drivers are not required to be dispatched to all ride requests in the city, but rather only to passengers who can pay via credit card and have access to the Uber app or website to request a vehicle

Portland’s Cease and Desist Letter to Uber

On December 8, the City of Portland sent a cease and desist letter to Uber demanding that Uber cease operations in the city limits.  The cease and desist letter is attached to the complaint as Exhibit A. While there have been varying reports of the city’s enforcement against individual Uber drivers, it does appear the

Support for Uber and Success in Other Markets

As of publication, close to 10,000 individuals have signed a petition to support Uber’s operations in Portland.   Uber remains wildly popular and it generally overcomes the legal obstacles it has faced in other markets.  As previously reported, Uber faced initial obstacles in Ann Arbor and Detroit.  While Ann Arbor sent Uber cease and desist letters, it generally did not crack down on Uber’s operations, and now a Michigan bill is likely to preempt any local regulations.  In Detroit, Uber worked with the city to enter into an operating agreement stipulating how the company could operate in Detroit.

Ride-sharing In and Around Portland

While regulatory issues are nothing new to Uber, the situation in Portland is slightly unique.  Uber is already operating in several cities in close proximity to Portland, for instance, Vancouver Washington.  Additionally, various tweets, such as the one below, were bring broadly disseminated citing the limited availability of traditional taxi services in and around Portland:


 Going Forward

Going forward, the legal questions related to whether Uber is complying with Portland’s City Code appear to be relatively clear:  Uber is not.  As in other cities, this is likely not a legal battle, but rather one of politics and policy.  If Portland desires to have Uber available in its city, it will ultimately amend its city code to provide for transportation network companies such as Uber, to obtain permits to operate in the city.  Alternatively, as happened in Michigan, the state of Oregon could pass statewide regulations that preempt the regulations of any particular municipality, thus permitting Uber to operate statewide as long as it abides by the state-level regulations.

So far, Uber’s tactics of commencing operations and then working out any regulatory hurdles have worked out with staggering success.  Indeed, Uber recently raised another $1.2B at an amazing $40B valuation.  So far, Uber has proven that massive customer acquisition can cure all evils – even legal and regulatory ones.

 

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Transportation Network Company Bill Supported by Uber Moves to House Vote in Michigan

The Michigan House of Representatives will vote on HB 5951 which would implement state regulations largely consistent with Uber and Lyft's existing practices.

The Michigan House of Representatives will vote on HB 5951 which would implement state regulations largely consistent with Uber and Lyft’s existing practices.

On December 4, Michigan’s House Energy and Technology Committee approved HB 5951.  The bill provides for state regulation of transportation network companies such as Lyft and Uber.  Uber supports the bill because it is consistent with its existing practices.  The bill would supersede any local regulations, such as the city regulations underlying Ann Arbor’s cease and desist letters to Uber and Lyft earlier this year.

Overview of HB 5951

HB 5951 directs the state to issue permits to any transportation network company that meets certain requirements, including:

  • the company carries insurance meeting certain minimum coverage thresholds;
  • drivers are at least 21 years old;
  • each driver maintains a Michigan chauffeur’s license;
  • the company performs background checks on and collects driver history reports from each drive;
  • that each driver vehicle undergoes a yearly safety inspection.

As reported here by Mlive, Michael White, manager of Uber’s Michigan operations, says Uber supports the bill and that Uber’s current practices are largely consistent with the bill’s requirements.

Existing Local Regulations

Currently, various municipalities provide their own regulations purported to cover ride-sharing services such as Uber or Lyft.  For example, as widely reported by outlets such as Business Week and MLive, on May 14 the city of Ann Arbor issued cease and desist letters to Uber and Lyft.  Other cities in Michigan, permitted Uber and Lyft to operate.  For example, Detroit entered into an operating agreement with these companies to permit their operation.  Section 11 of HB 5951 provides: “A local unit of government shall not enact or enforce an ordinance regulating a transportation network company.”  Accordingly, HB 5951 effectively trumps any local ordinances such as those of Ann Arbor seeking to restrict Lyft or Uber from operating.

Uber Urges Support for HB 5951

Beyond Michael White’s strong testimony in favor of HB 5951 at the committee level, today Uber also launched a marketing campaign urging its users to email their state representatives in support of HB 5951.  Michigan Uber users were emailed information about 5951, and a one-click mechanism for emailing the appropriate state representative.

On December 8th, Uber Michigan users received emails from Uber asking for their support of HB 5951.

On December 8th, Uber Michigan users received emails from Uber asking for their support of HB 5951.

HB 5951 Opposition
Not everyone supports HB 5951, however.  As noted here, the taxi industry and  Michigan Municipal league oppose the bill.  Objections include:
  • the bill does not require companies like Uber and Lyft to have large enough insurance policies;
  • the bill is unfair to taxi and limousine services that remain subject to harsher regulations; and
  • the bill may undo some beneficial regulations on limousine services (see the comments here).

In the end, Michigan’s legislature will have the final say.  The bill appears to have momentum and some have noted they expect it to become law before the end of the year.