Covington has unparalleled expertise in all aspects of Internet brand protection involving domain names. Our global, multidisciplinary team of attorneys, along with our skilled in-house internet investigators and proprietary technology tools provide far-reaching and comprehensive global domain name-related brand protection services.
Our attorneys:
Covington’s successful holistic domain name strategy and management approach is a key component of our efforts to support clients in protecting their brands online, and also seeks to reduce long-term domain name abuse, including that associated with the expected introduction of new gTLDs.
Domain Name Policy Expertise. Our expertise in domain name system policy issues is unequaled. One of our lawyers has been since December 2006 the Intellectual Property Constituency (IPC) (North America) representative to the ICANN GNSO Council, which develops and recommends to the ICANN Board of Directors policies relating to the domain name system. (ICANN is the California non-profit corporation that manages assignment of domain names and IP addresses).
Identifying, Monitoring & Analyzing Third-Party Domain Name Registrations. Our unique, sophisticated in-house technology allows us to identify existing and to monitor newly registered domain names for client marks or other keywords. We use strategies tailored to each client to identify, monitor and analyze each domain name for uses such as direct infringement, fraud, phishing, pay-per-click monetization, disparaging content, and adult content).
Enforcement Actions. We use a threat matrix developed and tailored for each client to assess the type and priority of enforcement action to best suit that client’s needs. When it is necessary to initiate a proceeding under the UDRP or a lawsuit under ACPA, our team has been extraordinarily successful. We have recovered hundreds of domain names in UDRP proceedings and ACPA actions.
Domain Name Registration Strategies. We work closely with clients to develop and implement offensive and defensive domain name registration strategies. Availability of desirable domain names is a key factor in our trademark clearance strategies.
Pre-launch Rights Protection Mechanisms. We have advised clients on and supported their participation in pre-launch Rights Protection Mechanisms (RPMs) to prevent and discourage abusive domain registrations at launch that were provided by the .asia, .biz, .info, .mobi, and .tel gTLDs, and the .co, .eu, .me, and .us country code Top Level Domains.
Acquisitions. We have acquired dozens of domain names for clients in circumstances ranging from impending business announcements about new brands to eliminating potential third-party obstacles to use and registration of a new brand to avoiding the need for an enforcement action.
Representative Matters
- We obtained a key decision in a 2009 UDRP proceeding (on behalf of AAA), which has given trademark owners a new weapon in their efforts to recover cost-effectively multiple infringing domain names registered through domain name proxy service providers.
- We have handled UDRP proceedings on behalf of many clients, including Microsoft, AAA, Borgata Hotel Casino & Spa, LIN Television, National Geographic Society, New Skies Satellites, Ourisman Dodge, and Verizon. Our ACPA expertise includes victories for AAA, Armani, Cartier, and PBS.
- We filed – and won – the first Sunrise challenge for a .mobi name.
- Our expertise with the .eu Sunrise policy and challenge process allowed us to identify a technical error committed by a client’s registrar; our letter to the registrar resulted in the registrar acquiring and transferring the domain name – which was identical to the client’s primary brand – to the client.
- We leveraged our relationship with a validation agent to secure prompt processing of a supplemental document required for a client’s .tel domain name.
- We success pursue ICANN compliance complaints about registrars, which in one recent case led to that registrar facilitating the transfer to a client of more than 10 names.
- Clients for which we have handled domain name acquisitions include AAA, Borgata Hotel Casino & Spa, Echelon Resorts Corporation, National Geographic Society, Pfizer, and TouchTunes Music.
- Acquired .in (India) and .sg (Singapore) domain names with Italian counsel’s assistance in negotiating with the Italian registrant.
Accolades
- The National Law Journal - Recognized on the Intellectual Property Hot List (2012)
Legal 500 UK, IP (2011-2012)
- WORLDLeaders IP Awards, shortlisted in the worldwide categories "Excellence in Domain Name Policy Implementation" (2008) and "Domain Name Strategy and Management" (2009)
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