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 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 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

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, a domainer, and Basic Fusion, its registrar. Navigation Catalyst 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 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.

The Global 100 Draw Attention To The Increasing Threat of Cybersquatting

[Updated on July 22, 2008]

• Alan C. Drewsen, Executive Director of the International Trademark Association.
• INTA Members Named Among Most Influential in Intellectual Property
• On the Web
• Cybersquatting:  The New Gateway Scam to Identity Theft?
• Blog Review Assignment:  ABC's Blog Blotter on Cybersquatting

The  lawyers of Traverse Legal are proud to sponsor this radio interview with Alan Drewsen from the International trademark Association (INTA), a global membership association dedicated to the support and advancement of trademarks and related intellectual property as elements of fair and effective national and international commerce. Mr. Drewsen provides insight and definition to the growing problem of cybersquatting, the Anti-Cybersquatting Consumer Protection Act (ACPA) and consumer protection in cyberspace. [Information on joining INTA].

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 name 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.

CADNA, Just a Start!!!

The Coalition Against Domain Name Abuse (CADNA), is a new group backed by some of the largest organizations in the world, such as Dell and Hilton. CADNA's goal is to make cybersquatting laws, including the Anti-Cybersquatting Act (ACPA), more stringent so as to deter, and ultimately prevent, cybersquatters from "stealing" millions of dollars per year from legitimate businesses. While a non-profit coalition like CADNA is a great start, especially in light of proposed policy changes to ICANN that would make it easier for cybersquatters to remain anonymous, domain name and trademark owners must still be cognizant of the ways to protect their current domains and expand into new valuable domains. Moreover, should you be victimized by a cybersquatter, you need a lawyer that can explain the most cost effective and timely method of reacquiring your intellectual property.

You can contact us today if you would like us to assist you in a comprehensive domain name portfolio protection plan. In addition, should WIPO or the NAF arbitration process be required, we can assist in filing a complaint, responding to a complaint, or simply navigating your way through the UDRP.

Domain Dispute: Utube v. YouTube.com

The owner of Utube.com has recently filed suit against the much more famous YouTube.com company recently purchased by Google.  UTube is a domain owned by a tube and pipe equipment manufacturer. 

Universal Tube and Rollform Equipment Corp. in Perrysburg, Ohio, said that confusion between its domain name, Utube.com, and YouTube.com is damaging its reputation and costing the company thousands of dollars. The firm filed its suit against San Mateo, Calif.-based YouTube Inc. Monday in the U.S. District Court for Northern Ohio.

Since Google Inc. purchased YouTube, visitors to Utube.com have skyrocketed, from a few thousand per month to more than 70,000 per day, Universal Tube said in its suit. That extra traffic has crashed Universal Tube's servers several times, forcing the company to switch Internet service providers, at an additional monthly cost, in order to handle the increased traffic.

Universal Tube asks the court to stop YouTube from using the YouTube.com domain and turn it over to Universal Tube. The company also seeks damages to be determined by the court and other monetary payment, including three times YouTube's profits from infringing sales.

A link to the complaint filed in Federal Court can be found here.