Cybersquatting, Trademark and Domain Name Dispute Attorneys: Protecting Domain Assets.

Attorneys specializing in cybersquatting, trademark and domain monetization matters.

Managing Partner Enrico Schaefer: "Traverse Legal's attorneys represents domainers like you in portfolio protection matters, trademark infringement threat letters and litigation.    We know cybersquatting and trademark law and pride ourselves on advanced litigation techniques which are both cost-effective and budget oriented.  We also handle a large volume of complex litigation under both the Lanham Act, UDRP and the Anti-Cybersquatting Protection Act.  Because we are a boutique litigation law firm, we know how to strategically and efficiently accomplish our client's goals."

If you are dealing with a domain name dispute based on trademark rights or wish us to analyze your domain portfolio for trademark issues, you may contact one of our domain attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

 

Domain name disputes are becoming more common all the time. Some cybersquatting and trademark infringement allegations against domain owners are legitimate.  Some are not. If you have received a cybersquatting threat letter demanding that you turn over your domain name to a third party or been named as a Respondent in an ACPA or UDRP/ICANN proceeding, you need the help of an experienced domain dispute attorney.  High value domain names and domain name porfolios need to be protected.  We can help protect your valuable domain assets.

Cybersquatting and the Nuclear Option: What the Protect IP Act and Stop Online Piracy Act (SOPA) Means to Domainers

Cybersquatting law addresses trademark infringement under the Uniform Domain Name Dispute Resolution Policy (UDRP Policy) and the Anticybersquatting Consumer Protection Act (ACPA).   But a new law which will directly affect domainers is gaining traction in Washington, D.C..  The Protect IP Act (Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011) and the Stop Online Piracy Act (SOPA) are working their way through Congress and appear to have enough traction to lead to the conclusion that some variation of these bills may eventually pass Congress.  The Protect IP Act seeks to kill websites (i.e. domain names) which engage in copyright and trademark infringement when those websites/domain names are “dedicated to infringing activities.”  Essentially, The Protect IP Act works at the DNS level.  A website is taken down by pulling the domain name from domain name servers which serve up results in the United States.  Essentially, the domain name is blacklisted from the Internet if it is determined that the primary activity of that website is to engage in trademark infringement or copyright infringement.  Of course, trademark infringement on the Internet is primarily expressed by cybersquatting.

Cybersquatting Casino and Poker Related Domain Names

MGM Resorts International files cybersquatting lawsuit in US District Court in Las Vegas against four individuals and two companies for cybersquatting on its casino and poker related domain names such as bellagioonlinepoker.com, circuscircuspoker.com, excaliburpoker.com, luxorpoker.com, mandalaybayonlinepoker.com and ariapoker.com.

MGM alleges that the defendants have registered "confusingly similar" domain names with the bad faith intent to profit from the registrations.  Read full complaint below:

Typosquatting Trademark Protected Domain Names Reportedly Costs Brand Owners over $285 Million Dollars Annually

Of all the different forms of intentional bad faith cybersquatting on trademark protected domain names, typosquatting is one that drives trademark owners a bit crazy.  Registering a typographical variation of a famous brand name or high-traffic website just does not pass the smell test. 

Domainers often defend claims of cybersquatting when they are the registrant of a typographical variation of a high-traffic website typically focuses on the bad faith element.    Domainers often claim ignorance of the underlying trademark protected domain name and website or ignorance of their own domain portfolio.  The latter defense to cybersquatting is the most common.  The argument goes something like this.

Cybersquatting Definition under the ACPA. The Basics.

What is cybersquatting? 

It is a question I hear a lot as an internet lawyer protecting trademark interests across the World Wide Web.  Today we are speaking with Attorney Brian Hall so we can all better understand what constitutes 'cybersquatting" under the Anti-Cybersquatting Piracy Act (ACPA), commonly referred to as the Anticybersquatting Consumer Protection Act. With statutory damages and attorney fees at stake, you don't ever want to wake up in the morning receiving an ACPA lawsuit from the local process server or a trademark infringement threat letter in your certified mail.

1.    Brian:  Domain names are sometimes protected as trademarks under the Cybersquatting Act. When does a domain name violate a trademark
2.    What is your layman's definition of cybersquatting?
3.    OK.  Now give me the legal elements of Cybersquatting under the ACPA.

Now that you know what cybersquatting is, you can decide for yourself what domains to keep and which ones to ditch. I you are a victim of cybersquatting, you need to protect your trademark rights.  If you have been accused of cybersquatting, you need to make sure you don't say anything which will be used against you later. 

Typosquatting High Traffic Trademark Protected Domain Names

Is typosquatting worth $100,000 in liability? 

Harvard University recently performed a study that estimated the amount of profit Google is generating from ad placements on typosquatted domain names.  The report alleges that Google potentially earns $500 million a year in revenue from the advertisements that are placed on the misspelled popular trademark domain names. But is it worth the liability?

It’s really simple to register a domain name which is a typographical variation of a high-traffic, trademark-protected website, and put up landing pages with advertisements, but rarely will you make more than a couple hundred dollars per year.  A cybersquatting lawsuit filed against you could result in $100,000 worth of statutory damages, plus attorney’s fees. 

Trademark Owners Should Block .XXX Domains

Traverse Legal's Internet Law Attorneys can help you protect your brand against .XXX cybersquatting and trademark infringement.

While the initial sunrise period has concluded, trademark owners still have an opportunity to protect their brand against registrations under the .XXX TLD.  If your trademark protected domain name or brand is registered by a third party under the .XXX TLD, your consumers and SEO could be affected.  The last thing any trademark owner wants is for a .XXX domain name to be returned if a consumer is searching Google, Yahoo or Bing for your trademark protected name. 

As of September 7, 2011, owners of registered trademarks can file applications to prevent third parties from registering .XXX domain names containing their trademarks.  This initial period, known as the sunrise period, will conclude on October 28, 2011.  Applications to opt-out can be submitted through any .XXX accredited registrar, with costs varying depending upon the registrar.

What Company Files the Most Cybersquatting Cases under the UDRP Cybersquatting Law?

Cybersquatting cases under the UDRP are up: 

According to Domain Incite author Kevin Murphy, children toy manufacturer Lego recently passed Microsoft in filed complaints against cybersquatters, reporting that Lego has filed 236 cases under the UDRP since 2006, one more than Microsoft.  “The 236 cases equates to over $350,000 in WIPO fees alone,” Murphy estimates. “I’d be surprised if Lego has spent less than $1 million on UDRP cases over the last few years,” he explains. Murphy also reports that America Online (AOL) has both companies beat with approximately 277 filed UDRP cases in the last decade.

So how aggressive should you be in pursing cybersquatting cases against cybersquatters under the UDRP?

Cybersquatting & Domain Dispute Update: Yet Another Risk for Parking Pages

Cybersquatting Law Update: Even something as passive as a web site parking page showing advertising links can subject a defendant to personal jurisdiction in another state.  Just ask Navigation Catalyst, Epic Media, Connexus, First Look and Basic Fusion.  These California and New York based companies could not extradite themselves from the exercise of personal jurisdiction in Michigan on allegations of mass typo-squatting of incontestable trademarks.

Domainers who target typographical variations of registered trademarks and famous brands with parked pages filled with PPC advertisements should be aware of the risk they are taking. Not all trademark owners simply go away when you transfer the domain name.  And, yes, you can be dragged into a far-away court to answer allegations of cybersquatting under the right set of facts.

Cybersquatting Trademark Protected Domain Names

Some more highlights from the Judge's decision.

Apple Registers 50 New Domain Names Associated with WWDC

Following Apple’s announcements at  The Worldwide Developers Conference (WWDC) on Tuesday, Apple secures 50 new domain names related to iCloud and features of iOS 5, according to MacRumors. 

- airplaymirroring.com
- appleairplaymirroring.com
- appledocumentsinthecloud.com
- applegestures.com
- appleicloudphotos.com
- appleicloudphotostream.com
- appleimessage.com
- appleimessaging.com
- appleiosv.com
- appleitunesinthecloud.com
- appleitunesmatch.com
- applelaunchpad.com
- applemailconversationview.com
- applepcfree.com
- applephotostream.com
- appleversions.com

Cybersquatting Law Firm Case | Bad Faith Cybersquatting Statutory Damages

Statutory damages provided in bad faith cybersquatting lawsuit: 

In a recent cybersquatting case decided on April 18, 2011, the 4th Circuit Court of Appeals affirmed the District Court’s finding of bad faith cybersquatting by defendant as a matter of law and award of $80,000 in statutory damages.  The decision titled Newport News Holdings Corporation v. Virtual City Vision Incorporated VCV can be found here. 

This internet case is interesting because of the lower court’s finding of bad faith cybersquatting as a matter of law on plaintiff’s motion for summary judgment.  Many of these cybersquatting cases under the Anticybersquatting Consumer Protection Act are clear instances of bad faith intent to profit.  However, there is relatively little internet case law on the subject, leaving many courts confused as to exactly how to apply the “bad faith intent to profit” elements under the Anticybersquatting Consumer Protection Act (ACPA), also known as the Anti Cyberpiracy Protection Act.   Here, there was no question about the trademark for “NEWPORT NEWS” in the international class and description of services for women’s apparel.  There was no dispute that in 1997, defendant changed its domain www.newportnews.com from information and news from the Newport News area, to primarily advertize and market ads for women’s apparel.  There was no question that there would be confusion of consumers in comparing the www.newportnews.com website with plaintiff’s trademark (note the court does a nice analysis of the difference between showing confusion in a trademark infringement case, versus an ACPA).  The lower court awarded $80,000 in statutory damages plus attorney’s fees in favor of plaintiff.  With regard to the cybersquatting attorney’s fee award, the court of appeals noted: