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. 

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.

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.

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).

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.” 

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.
Technorati Tags: cybersquatting, verizon, navigation catalyst, ACPA, Domain disputes

Hobbits v. Hobbitts: Generic Mark Argument Won't Prevent Panel From Seeing Pay Per Click Parking as Bad Faith

Seemingly generic domain names can often turn into a trademark nightmare when used in combination with pay per click parking pages.  A recent proceeding in front of the World Intellectual Property Organization demonstrates that a registrant’s inability to control these pay per click parking ads can result in the loss of a domain name.  It is important to realize that these parking pages can be used against you as evidence of your bad faith intent to profit from the trademark of another.

More Cybersquatted Domain Names for Your Buck With One UDRP Complaint

Rule 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy states, “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”  This means that if a trademark owner’s business is being harmed by multiple unrelated cybersquatters, she must file one complaint against each registrant.  What if you have a popular trademark and/or domain name (which usually coincides with a popular product or service) that you believe is being cybersquatted by numerous domain name registrants?  Based upon the number of UDRP Complaints that name only one domain, most Complainants, and even their attorneys, believe you have to file one Complaint against each domain name registrant.

The Many Names of Cybersquatting

United States federal law enacted the ACPA to provide a remedy for cybersquatting.  Cybersquatting requires a domain registrant to register, traffic in, or use a domain name that incorporates "a mark that is distinctive at the time of registration of the domain name, identical or confusingly similar to that mark, and possess "a bad faith intent to profit" from that mark.  As cybersquatters become more sophisticated and trademark holders become more intent on protecting their intellectual property, new names have been used to more specifically define the kind of cybersquatting.  Nonetheless, the ACPA elements required above remain the same for the following forms of cybersquatting.

Judicial Watch’s Proposed Cybersquatting Claim Against Larry Klayman

In a recent ruling by United State District Colleen Kollar-Kotelly, Defendant Judicial Watch, Inc. has been allowed to amend its counterclaims against Plaintiff Larry Klayman in what is shaping up to be a somewhat ironic judicial battle between the watchdog group Judicial Watch and its founder Larry Klayman who is no longer affiliated with the organization. The complaint and counterclaims are detailed and expansive.  You can read the complaint here.  Of interest to me is the recent effort of Defendant and Counter-Plaintiff Judicial Watch against Larry Klayman for cybersquatting.

Judicial Watch's proposed cybersquatting claim is brought under the Anti-Cybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d). Am. Count. P P 106-16. To state a cybersquatting claim under the ACPA, Judicial Watch must allege that (1) JUDICIAL WATCH is a distinctive or famous mark entitled to protection; (2) Klayman's www.savingjudicialwatch.org domain name is identical or confusingly similar to Judicial Watch's mark; and (3) that Klayman registered his domain name with the bad faith intent to profit from it. 15 U.S.C. § 1125(d)(1)(A); Shields v. Zuccarini, 254 F.3d 476, 482 (3d Cir. 2001). Klayman does not contest whether Judicial Watch's federally registered trademark, JUDICIAL WATCH, is distinctive or famous, and the Court therefore assumes as much arguendo.