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05/12/2014

gTLD Domains at Top Auction Prices

There was a massive expansion of new general top-level domain names (gTLDs) at the end of 2013.  Having a more descriptive word to the right of the dot will give consumers, domainers and business owners the opportunity to expand their online presence with a domain name that will better represent who they are or more closely fit to what type of business they have.   Price tag  However, the domain auction companies that purchased these gTLDs did so with a high price tag.  For example, the gTLD extension of .garden and .yoga  sold together for the price tag of almost $6 million dollars.  

So what does this mean for those looking to purchase at the next release of gTLDs? It could mean that domain auction companies or any other businesses looking to purchase gTLD extensions as they are rolled-out is going to have to dig deeper than just in their pocket change purse.  Consumers are learning the importance of a good domain name to have in order to get very high online recognition, so domain auction houses and big businesses definitely know the value of applying for and paying big bucks for the best gTLDs.  

10/29/2013

Do Celebrities Have Rights in Their Matching Domain Names?

    Celebrity domain names are almost always in the news. That's because people tend to register domain names of famous people, politicians and celebrities in order to make money off of someone else's fame. Celebrity cybersquatting has been around since domain names first became available to register.

Continue reading Do Celebrities Have Rights in Their Matching Domain Names? >>
05/02/2013

CAN A TOP LEVEL DOMAIN (GTLD) BE TRADEMARKED?

With all the new GTLDs being rolled out by the Internet Corporation for Assigned Names and Numbers (ICANN), the question of whether a GTLD can be trademarked has become the big issue. The answer is relatively straightforward. A GTLD cannot in and of itself be trademarked. But if the GTLD is in fact an indicator of source and origin (i.e., .google, .deloit, .aarp, .censure, .ford, .amazon, etc.) then the GTLD can be trademark protected.

Currently, there are a number of legal rights and objections that have been filed on a variety of GTLD applications claiming that the applied-for GTLD infringes an existing right of a trademark owner. Many of the objections, however, deal with clearly generic and/or descriptive dictionary words. Those GTLD legal right objections will, no doubt, fail because they seek protection of the GTLD itself which is purely descriptive of some vertical (i.e., .golf, .analytics, .apartments, .architect, .art, etc.).  While a variety of trademarks have been filed by a variety of applicants for otherwise descriptive/generic GTLDs, those applicants have typically had to disclaim exclusive rights in the word or have filed design class word marks knowing they can't achieve trademark rights in the word itself.

Below is an example of a refusal by the USPTO examining attorney analyzing the issue and providing the analysis which virtually precludes dictionary words from achieving exclusive trademark rights as a GTLD registry:

SECTION 2(E)(1) – MERE DESCRIPTIVENESS REFUSAL

Registration is refused because the applied-for mark merely describes the field of applicant’s services.
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

Top-level domains or TLDs often describe the subject matter or user of the domain space. In re the Dot communs. Network LLC, 2011 TTAB LEXIS 366 (Trademark Trial & App. Bd. Nov. 22, 2011). When the applied-for top-level domain engenders the commercial impression of a top-level domain and the top-level domain operator registers domain names, consumers would anticipate that the top-level domain identifies the registration of domains in the field identified in the mark. Id. Moreover, the TTAB has held that top-level domains are descriptive for other services where the applied-for mark directly conveys to relevant consumers that the services are related to the field specified in the mark. Id. Specifically, consumers would expect ancillary goods and services to be rendered by the operator of top-level domain registry in the same field as the domain name registration services. Id.

Here, applicant’s mark, combines the term DOT, meaning “the character that separates the different parts of the domain name” with [dictionary word], meaning “services that enables real estate brokers to establish contractual offers of compensation (among brokers), facilitates cooperation with other broker participants, accumulates and disseminates information to enable appraisals, and is a facility for the orderly correlation and dissemination of listing information to better serve broker's clients, customers and the public” for services featuring and related to top-level domain names in the field of real estate listings. See Attachment 1 – Microsoft Internet & Networking Dictionary definition of DOT;  see also Attachment 2 – Dictionary.com definition of [dictionary word] and Wikipedia listing for multiple listing service.

Purchasers would perceive the applied for mark as a TLD because it is structured in the manner of a top-level domain. That is, purchasers are accustomed to the combination of a decimal point followed immediately by a term or phrase as a top-level domain. See, i.e., Attachment 3 – examples of top level domains that would lead purchasers to the conclusion that the applied-for mark is a top level domain. When used in connection with top-level domain name registration consulting, purchasers will not understand the mark as denoting applicant as the source of the services, but as conveying salient  information about the services.

Ultimately, when purchasers encounter applicant’s services using the mark DOT[dictionary word], they will immediately understand the mark as an indication that applicant’s consultation services relate to the registration of top-level domains in the field of real estate and not an indication that applicant is the source of the services. Therefore, the mark is merely descriptive of the field of applicant’s services and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

04/09/2013

Traverse Legal Obtains $74,500 Statutory Damage Award Against Overdrive, Inc. for Bad Faith Cybersquatting.

Traverse Legal's cybersquatting law lawyers obtained a statutory damage award under the ACPA on behalf of their client in the amount of $74,500 against Overdrive, Inc., a distributor of digital products such as ebooks, audiobooks, music and videos, for bad faith cybersquatting and breach of contract.

The US District Court also ordered Overdrive, Inc. to transfer over the infringing domain name "forwardreviews.com" to the plaintiff.

Case Name:  ForeWord Magazine, Inc. v Overdrive, Inc., United States District Court, Western District of Michigan, Southern Division, No. 1:10-cv-01144. The case is on appeal as of March 2013.

OverDrive is funded by Insight Venture Partners, a private-equity firm that focuses on technology companies.  Overdrive’s key products and services:   OverDrive Media Console, OverDrive Read, OverDrive Media Station, Content Reserve.

UPDATE June 20, 2013: "The matter has been resolved by agreement of the parties and the appeal dismissed. The matter is now closed.

10/12/2011

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. 

Continue reading Cybersquatting Definition under the ACPA. The Basics. >>
06/10/2011

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.

Continue reading Cybersquatting & Domain Dispute Update: Yet Another Risk for Parking Pages >>
02/16/2011

Top 10 Domain Name Stories of January 2011

Despite suffering from Domainer Flu, the .com gTLD of which is now owned by TuCows' YummyNames (thanks Bill Sweetman), we bring you the top 10 cybersquatting/domain name stores of January 2011:

1. Court allows Microsoft's Claims for Contributory Cybersquatting. The Western District of Washington confirmed this month that contributory cybersquatting does, in fact, exist. Microsoft asserted the contributory cybersquatting claim against Digispace Solutions and yMultimedia and alleged that those companies induced third parties to register domain names that contained or consisted of typosquats of Microsoft's trademarks.

2. John Zuccarini loses in court... again. Zuccarini filed a lawsuit against eNom, NameJet, Verisign, and Network Solutions after a court-appointed receiver failed to renew several domain domain names that were formerlly owned by Zuccarini, which included govermentgrants.com, usgoverment.com, and britian.com. These, and several other domain names, were awared to Office Depot after it sued Zuccarini, which in turn assigned them to DS Holdings to sell. As Domain Name Wire reports, the court noted, “Zuccarini has already wasted quite enough of the parties’ and this Court’s time and resources in responding to his frivolous claims."

3. VeriSign announces 4th Quarter Loss, Profits Up. VeriSign announced a 4th quarter loss of $40.5 million, due in part to a $109 million interest payment related to a special dividend. Despite this loss, domain sale and SSL certificate revenue was up 13% to $178.8 million.

4. Demand Media has successful IPO, opens at over $23 a share. Domain industry giant Demand Media's IPO was a successful event. Shares were up 40% before opening at over $23 a share, and the share price remained relatively consistent throughout January. Demand Media owns a large portfolio of domains, domain name registrar eNom, parking company HotKeys, and a part of NameJet. Domain Name Wire has some insight into how this may change the industry and lead to the acquisition of other registrars.

5. Google strikes back at content farms, may allow blocking of domain names. Potentially in response to Demand Media's IPO, Google has been rumored to be working on a new feature set that will allow end-users to block domain names from search results. This feature would be tailored towards the blocking of spam and content farms, such as Demand Media's eHow. For more on Google's algorithm change, read Matt Cutts' blog.

6. Oversee.net Acquires ShopWiki. Oversee.net has acquired ShopWiki, a network of shopping comparison websites. Oversee.net is the parent company of DomainSponsor, SnapNames, and Moniker. Domain Name Wire reports that ShopWiki.com receives over three million unique visitors per month.

7. New York Times buys dealbook.com from Frank Schilling, after it lost a UDRP proceeding for the name. Media giant New York Times has purchased dealbook.com from notable domainer Frank Schilling for an undisclosed price. Frank's Name Administration company won the UDRP on a laches defense--a defense that is very rarely recognized under the UDRP.

8. GoDaddy (and others) begin to heavily market the .co ccTLD. GoDaddy has begun to heavily market the .co ccTLD through an advertizing bliz that included a Super Bowl commercial. Other comanies, such as Overstock.com, have followed suit. Overstock.com has rebranded as O.Co, a domain that cost the company $350,000.

9. NameDrive receives undisclosed investment amount and reorganizes. Domain Name Wire reports that domain parking company NameDrive has received an undisclosed investment from BIP Invesment Partners S.A., which also holds investments in Key-Systems, EuroDNS, and Domain Invest. NameDrive says that it has sold over $10 million in domains through its NDX market since 2008. 

10. Over 200 sickened at DomainFest 2011. Media outlets are now reporting that over 200 individuals have been struck by an unknown sickness following their attendance at DomainFest 2011 and the subsequent afterparty sponsored by DomainSponsor, which was held at the Playboy Mansion. The cause is yet to be determined, but some have speculated that it may be Pontiac Fever, a respiratory infection caused by the same Legionalla bacteria responsible for Legionnaires disease. We hope that this incident will not overshadow the otherwise best DomainFest yet, and we hope to see all of our friends and collegues again at DomainFest 2012.

01/17/2011

What are the Elements for Establishing Cybersquatting under the Anti-Cybersquatting Consumer Protection Act (“ACPA”)?

The Anti-Cybersquatting Consumer Protection Act (“ACPA”) is a statute under the Lanham Act which specifically protects domain names from trademark infringement. 

What are the elements which must be proven to establish cybersquatting under the Anti-Cybersquatting Consumer Protection Act (“ACPA”) creates liability for cert. Under the ACPA, a plaintiff must show that “(1) the defendant registered, trafficked in, or used a domain name; (2) the domain name is identical or confusingly similar to a protected mark owned by the plaintiff; and (3) the defendant acted with ‘bad faith intent to profit from that mark.’” DSPT International v. Nahum, No. 08- 55062 2010 WL 4227883 at *3 (9th Cir. Oct. 27, 2010); 15 U.S.C. § 1125(d)(1)(A).

02/23/2009

Pluto Domain Services Found To Have Engaged In a Pattern of Bad Faith Cybersquatting

Domainfight.net provides the following returns for “Pluto Domain Services” as a respondent in UDRP arbitrations.  There is no question that Pluto Domain Services is a habitual cybersquatter under the Uniform Domain Name Dispute Resolution Policy.  Note the bancopopularpr.com decision specifically notes the prior proceedings against this domain registrant, noting a “pattern of bad faith registration and use under the policy.” 

08/04/2008

Is Navigation Catalyst Systems a Typical Domainer? All Domainers are not Cybersquatters.

Eric Goldman at the Technology & Marketing Law Blog has a post about the recent ACPA injunction entered against Navigation Catalyst Systems and registrar Basic Fusion. Mr. Golman states that this is the first decisions against a "domainer" which of course raises the issue of definition. What is a domainer?

Technology & Marketing Law Blog: Domainer Loses Cybersquatting Lawsuit--Verizon v. Navigation Catalyst Systems

This is an extremely interesting and potentially precedent-setting case regarding domaining and domain name tasting. The court condemns both practices, leading to a preliminary injunction against the domainer and its registrar based on the Anti-Cybersquatting Consumer Protection Act (ACPA). As far as I can recall, this is the first time that a domainer has lost an ACPA lawsuit in court, and it provides an important data point confirming that domaining can be cybersquatting (a previously unresolved issue). I also believe that this is the first time a domain name registrar has lost an ACPA lawsuit. Although the court wasn't asked to assess damages (it was just an injunction request), it's clear from the strongly worded opinion that Verizon will get paid if the case gets that far. As a result, this is a major loss for domainers and might very well force them to change their practices.

The defendants are Navigation Catalyst Systems, a domainer, and Basic Fusion, its registrar. Navigation Catalyst Systems engaged in some common domainer practices, including:

* high volume automated domain name tasting. Many of the registered domains have nothing to do with anyone's trademark, but some were typographical error versions of Verizon's trademarks (allegedly, nearly 1400 were variations of Verizon's trademarks)
* trademark "scrubbing" of domain names during the tasting period (both an automated blacklist and a manual review)
* disabling ads on any challenged domains and offering to transfer those domain names to the trademark owner.

All of the attributes above might be indicia of cybersquatting, but do not describe a domainer. A domainer is someone who registers generic, descriptive or even arbitrary words, to the extent they are not trademark protected, for resale, development or advertising revenue. A cybersquatter is someone who registers trademark protected domains to divert traffic from trademark holders. Most legitimate domainers I know consider Navigation Catalyst Systems to be a black hat cybersquatting company.
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Cybersquatting: 'How To' Resources

  • Anticybersquatting Consumer Protection Act - Wikipedia
    The Anticybersquatting Consumer Protection Act (also known as Truth in Domain Names Act), a United States federal law enacted in 1999, is part of A bill to amend the provisions of title 17, United States Code, and the Communications Act of 1934, relating to copyright licensing and carriage of broadcast signals by satellite (S. 1948). It makes people who register domain names that are either trademarks or individual's names with the sole intent of selling the rights of the domain name to the trademark holder or individual for a profit liable to civil action.
  • Typosquatting - Wikipedia
    Typosquatting, also called URL hijacking, is a form of cybersquatting which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser. Should a user accidentally enter an incorrect website address, they may be led to an alternative website owned by a cybersquatter.
  • Reverse Domain Hijacking - Wikipedia
    The term reverse domain hijacking refers to the practice of inequitably unseating domain name registrants by accusing them of violating weak or non-existent trademarks related to the domain name.
  • Uniform DomainName DisputeResolution Policy - Wikipedia
    The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP policy currently applies to all .biz, .com, .info, .name, .net, and .org top-level domains, and some country code top-level domains.
  • Cybersquatting - Wikipedia
    Cybersquatting, according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else.

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