Chuck Kisselburg at the ICANNblog makes a good point about he so-called Anti-Phishing Bill, Senate Bill 2661. While the bill is not close to becoming a law at this juncture, Chuck correctly notes that "the bill feels like a fox in sheep’s clothing as the bill’s name suggests a bill against anti-phishing. Instead the bill not only discusses anti-phishing but seems to be based around the use, or misuse of domain names."
Continue reading "S. 2661 is a Fox in Sheep’s Clothing? Why Call it an Anti-Phishing Bill When It Is Also A Trademark Bill?" »
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.
Continue reading "More Cybersquatted Domain Names for Your Buck With One UDRP Complaint" »
While the UDRP is an efficient and relatively cost-effective mechanism by which a trademark owner can acquire a domain from a cybersquatter, it is not the only option. This is especially true since the proofs needed to win a UDRP are not the same as those required to win an ACPA federal lawsuit, although similar. If your UDRP Complaint requesting that the domain name be transferred is denied, you can still pursue an ACPA lawsuit for cybersquatting, as long as you do so within the applicable statute of limitations.
Should you be on the receiving end of a UDRP Complaint and lose, you have rights that may be worth pursuing. However, you do need to know that if you lose, you must file a lawsuit in a court of law to stay, or prevent, the domain name from being transferred to the Complainant that prevailed under the UDRP.
The UDRP is a form of adjudication, but as the below excerpt from a known case makes clear, it is no court of law.
Continue reading "Win or Lose: The UDRP Is Not Your Only Option When It Comes to Domain Names" »
Rick Schwartz has been warning other domainers for some time about the dangers that lurk ahead. One lawyer at Out-law.com is proposing that trademark holders band together to track down and police cybersquatters worldwide. This effort would be funded by large global corporations. John Mackenzie, an intellectual property and technology law expert at Pinsent Masons, the law firm behind OUT-LAW.COM, said that businesses should band together to tackle the multi-million dollar cybersquatting industry pro-actively.
"What is really needed and what may occur is a trade organization pushing a policing function whose only purpose is to chase these people," said Mackenzie, saying that it could be similar to business-funded copyright protection groups such as the Business Software Alliance.
"Brands have no choice," he said. "This is turning from the opportunistic registration of domains with people making small amounts of money in garden shed operations into activity from highly sophisticated organizations who are operating around the world."
Essentially, what is being proposed here is a common fund to bring cybersquatters into court in order to sue for damages, as opposed to the limited relief of domain transfer allowed under the UDRP and similar policies.
The mere holding of an infringing domain name without active use can constitute use in bad faith under the UDRP. Despite this, all too often trademark owners watch as domains are registered that incorporate their trademark. Unfortunately for the trademark owner, they think costly litigation under the ACPA is the only means of redress for what appears to be clear cybersquatting. While the UDRP is cost effective and efficient, there is a general understanding (or more appropriately misunderstanding) that there must be a use of the domain name in order to file a UDRP complaint and win the UDRP. In fact, the rules for the Uniform Domain Name Dispute Resolution Policy, states that the domain name must have been registered in bad faith and used in bad faith to satisfy the policy. Registration in bad faith was, and continues to be perceived by some, as not enough. That said, recent panels have held that a Respondent’s failure to make an active use of the web site, such as merely parking the web site with a web hosting company, is enough to satisfy bad faith registration and use under policy paragraph 4(a)(3).
Continue reading "UDRP: Lack of Use of a Domain is NOT Always a Defense" »
Follow the Latest Developments In The Dell Typosquatting / ACPA Lawsuit Here.
At the heart of the Dell ACPA cybersquatting lawsuit is the concept of the now highly controversial Add Grace Period (AGP) implemented by ICANN, which is the technological and policy foundation of domain tasting. A Grace Period refers to a specified number of calendar days following a Registry operation in which a domain action may be reversed and a credit may be issued to a registrar. AGP is typically the five day period following the initial registration of a domain name. AGP appears as a contractual term in some, but not all gTLD registry agreements.
AGP was implemented for consumers to correct of typos and other errors by registrants. Once a domain name is deleted by the registry at this stage, it is immediately available for registration by any registrant through any registrar. When a domain name is registered through an ICANN accredited registrar, that registrar may cancel the domain name at any time during the first five calendar days of the registration and receive a full credit for the registration fee from the registry.
Few companies have publicly taken on the serious serious issues of cybersquatting and the policies of ICANN which create and support the practice of domain tasting, a commercial activity which has little if any legitimate justification in cyberspace. Few companies have the financial ability to take these matters to court and expose the seedy practices of cybersquatting, typosquatting and domain tasting. In many instances, the defendants are hard to locate or even identify, making the possibility of collecting damages remote.
In the Dell lawsuit, it is alleged that the defendants set up a network that cycled infringing domain names from one registrar to the next in order to hold onto the domains indefinitely without ever paying for them, all the while profiting from pay-per-click ads on the sites that often served visitors with ads for Dell's competitors. These allegations suggest one of the most obvious examples of intentional bad faith cybersquatting. Unfortunately, this level of cyber and typosquatting is not only common, but rampant on the world wide web today.
These blatant squatters are also difficult to coral. Because of private registration, it is often difficult to identify the registrant behind a particular domain registration. Even if the registrant is identified, the more sophisticated squatters use offshore companies to The complaint further charges that the registrars created and controlled a series of shell corporations in the Bahamas to act as the entities registering the domains, including Caribbean Online International, Domain Drop S.A., Domibot, Highlands International Investment, Keyword Marketing Inc., Maison Tropicale, Marketing Total S.A, Click Cons Ltd., Wan-Fu China Ltd. and Web Advertising Corp.
Continue reading "Dell Lawsuit Exposes the Seedy Side of Domaining and Domain Monetization" »
Traverse Legal offers a free Cybersquatting Report to anyone interested in determining whether or not their domain name is having traffic diverted, website visitors forwarded to competitor websites or are otherwise the victim of cybersquatting.
Many companies go for months or years without realizing that their web traffic is being diverted to other locations as a result of cybersquatting activity. Contact us for a free Cybersquatting Report and find out who's stealing your website visitors.
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.
Continue reading "Judicial Watch’s Proposed Cybersquatting Claim Against Larry Klayman " »
According to ICANN, domain tasting is defined as “the monetization practice employed by registrants to use the ad grace period to register domain names in order to test their profitability.” The ad grace period, or AGP, is the 5-day period following a registration during which the registrant is entitled to revoke the registration for a full refund. During this period, registrants conduct a cost benefit analysis to see if the tested domain names return enough traffic to offset the registration fee paid to the registry over the course of the registration period. In other words, for six dollars or so, a registrant can register numerous domain names, which may include trademarks of others, in order to see if they can acquire enough revenue to justify such a practice.
However, the recent case Dell vs. Florida Registrars may be changing all of this. Trademark holders are rooting for Dell, while cybersquatters are undoubtedly hoping to mount a defense against claims of cybersquatting, trademark infringement, counterfeiting, dilution, and unfair competition. Although the result is yet to be determined, it is clear that trademark owners are no longer standing by as cybersquatters seek to capitalize off of their valuable trademark rights. So, whether you are a trademark holder or an individual interested in registering domain names, it is important for you to understand the distinctions between being a domainer and being a cybersquatter. You may be conducting a legitimate business in one sense or exposing yourself to significant liability in another. Contact us today if you wish for us to analyze your domain name, trademark, or cybersquatting issue.
In a lawsuit filed in Florida, Dell charges Juan Pablo Vazquez of Miami, Florida, several unknown individuals, and a handful of domain name companies with violating its trademarks on more than 1,100 domain names.
The lawsuit, unsealed two weeks ago, accuses the defendants of cybersquatting, trademark infringement and dilution, counterfeiting, deceptive trade practices, and unfair competition.
Dell alleges that the defendants registered domains that contain the name "dell," or something close to it, and used the infringing domains to host "'pay-per-click' Web sites that display or displayed advertising links to various commercial Web sites" and to offer goods or services identical or similar to Dell's sites.
The lawsuit also claims the defendants set their sites up to serve pop-up and pop-under ads, and thereby earned ad revenue off Dell's trademarked names.
Cybersquatting -- using, registering, or profiting in bad faith from a domain name that's identical or similar to an established trademark -- and typosquatting -- using, registering, or profiting in bad faith from a domain name that's a deliberately misspelled version of an established trademark -- isn't only a problem for Dell. many other companies are having their internet traffic diverted by typosquatting and other forms of cybersquatting...
Read more about the Dell cybersquatting article here:
- Dell claims that there is a network of shell businesses that profit from people who make typos while entering URLs
- Dell Fights Cybersquatters And Rogue Resellers In Court
- Will Google AdSense be Impacted by the Dell Lawsuit?
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].
Continue reading "The Global 100 Draw Attention To The Increasing Threat of Cybersquatting" »
Traverse Legal offers a free Cybersquatting Report to anyone interested in determining whether or not their domain name is having traffic diverted, website visitors forwarded to competitor websites or are otherwise the victim of cybersquatting.
Many companies go for months or years without realizing that their web traffic is being diverted to other locations as a result of cybersquatting activity. Contact us for a free Cybersquatting Report and find out who's stealing your website visitors.
We are a law firm specializing in cybersquatting and domain theft matters.
Domain name disputes are becoming more common all the time. There are a number of reasons why people lose their domain names to cybersquatters. If you have trademark rights in a domain name, you may have the ability to force the domain registrar to move the domain under your control. Cybersquatting occurs in a variety of different circumstances. If you would like us to review your matter to determine whether or not your legal rights are being violated, you may contact us by clicking here.
If you have received a cybersquatting threat letter demanding that you turn over your domain name to a third party, you should contact a cybersquatting lawyer. Law firms are in a much better position to analyze these issues than you may be. Just because someone has threatened you with a domain name violation based on trademark law doesn’t mean you are necessarily in violation of law. You can contact a domain name lawyer today if you wish us to analyze your domain name, trademark or cybersquatting issue.
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.
Traverse Legal's Enrico Schaefer featured on vTalkRadio.com. Here he
explains how to protect your domain name and trademarks from theft or
cybersquatting on the internet. ...
JOHN: Welcome to VTalk Radio Tech Spotlight. Sponsored by Traverse Legal, PLC
. Today we are talking about protecting your domain name with Enrico
Schaefer, specialist in technology and domain law. Good Morning, Enrico.
ENRICO: Good Morning, John. Thanks for having me today.
JOHN: I understand you have got some great tips to share with everybody about protecting their domain name?
ENRICO: Yeah I do, John. You know, people do not realize that their
domains are always at risk. People register their domain name and they
think, great I own the domain. They put up a great website, they put up
a merchant account, and before you know it, they're doing 10s or 100s
of thousands of dollars worth of business through that website. They
wake up one morning and their domain is gone. Their website is gone,
and they call me because they are in crisis wanting to know what they
can do. What we often find, John, is that these people who've lost
their website did so through their own negligence.
JOHN: What in the world could you do to lose your website after you've already registered it?
Continue reading "Protecting Your Domain Name: Control is the Key." »
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.
The DomainTools Blog recently reported the following information concerning Neiman Marcus’ success in protecting its trademarks from cybersquatters using the Anti-cybersquatting Protection Act.
Name.com and its sister company, Spot Domains LLC, have been accused of violating the anit-cybersquating act by registering over 40 domain typos using the Neiman Marcus trademark. Neiman Marcus is seeking over $4,000,000+ in damages and also injunctive relief. Neiman Marcus just settled its earlier case with Dotster and it appears they are looking for more domain tasters to sink their teeth into. In the filings in U.S. District Court in Denver, they asked for $100,000 per domain. In our own research, it appears that Domain Tasters in 2002 were looking for generic words or phrases that they could monetize, but since then most of the viable words and phrases that could be monitized have been registered. Domain Tasters of 2007 aren’t finding a lot of generic words and phrases any more, however they are finding typos of famous brands that are monetizing well. For example, Well Fargo Bank.com was registered by a Domain Taster yesterday.
As part of the settlement with Dotster, they agree to stop registering names similar to Neiman Marcus. Dotster also agreed to suspended Domain Tasting, and I bet that Name.com will have to suspend Domain Tasting as part of its settlement too. At any given time, more then 5 million domains are tied up in Domain Tasting, however lawsuits have been bringing those numbers down. Maltuzi located in California is another Domain Taster that just got sued by Microsoft. The registrar for Maltuzi is Name King, and upon the Microsoft lawsuit, Name King suspended Domain Tasting for all its clients. Name King had facilated Domain Tasting for a few select customers.
Many Domain Tasters have been masking their whois or using shell companies to reduce their liability, but as we have seen in the Microsoft lawsuit, they name the defendants as unknown "John Does." Lawyers use this type of lawsuits to obtain identities through subpoenas and then can sue the people they find.
The ICANN Blog has reported the following information concerning the Registerfly problems.
Q. If ICANN terminated Registerfly's accreditation agreement on 31 March, why do they still claim to be accredited?
A. Registerfly decided to file an arbitration action to stall the termination. For better or worse, this is their right under the accreditation agreement. The accreditation agreement is a contract that ICANN has to follow. If we didn't follow the agreement, Registerfly could potentially continue operations as an accredited registrar indefinitely. So please be patient and understand that we are doing everything we legally can to protect registrants without jeopardizing our right to terminate Registerfly' accreditation.
Q. What will happen when Registerfly's accreditation is finally terminated?
A. There are a number of paths we could pursue, and to some extent, the one we follow will depend on the behavior of Registerfly. In the 'big picture' the process looks like this: (1) Registerfly loses its access to the registries; (2) a competent and qualified accredited registrar is selected by ICANN to receive a 'bulk transfer' of names (and underlying data) from Registerfly to it; (3) former Registerfly customers will be able to contact the new registrar to manage or transfer their names.
Q. How does the bulk transfer work?
A. ICANN has the power to approve a bulk transfer from one registrar to another. We will not do so unless the transfer is in the community interest. We have told Kevin Medina he should name a "gaining registrar" now and stop hurting his customers, but he has not done so. If Kevin does name a gaining registrar, we will only approve the transfer if it is in the community interest.
In a bulk transfer, there is no fee to the customer. However, a bulk transfer is different from a normal transfer in that it does not add a year to the registration.
Q. Why doesn't ICANN bulk transfer the names now?
A. Like it or not, Registerfly is still technically accredited, pending the outcome of our lawsuit against them or their arbitration action. Because Registerfly is accredited, we cannot initiate a bulk transfer. When Registerfly's termination is final, we will bulk transfer the names, either to a registrar suggested by Kevin Medina or one chosen by ICANN.
Q. What is the status of names that were deleted by Registerfly that are currently in RGP (redemption grace period) or PendingDelete?
A. The registries have agreed not to "drop" names that are deleted by Registerfly. In other words, the names will not be permanently deleted. Today, Registerfly could technically allow its customers to redeem names in RGP, but given its history of not being able to fund the registries, it doesn't seem like that's going to happen. (There has to be money in Registerfly's registry accounts in order to process transactions.)
Since Registerfly has failed in its obligations to its customers, we are continuing our discussions with the registries and others to ensure that customers will be able to regain control of their domain names. Unfortunately, unless Registerfly begins funding its registry accounts in earnest, we may not be able to make that happen until their accreditation agreement is finally terminated.
Q. What if my name was deleted before the registries began prohibiting deletions by Registerfly?
A. If the name is available for registration, by all means, register it.
If the name was registered by someone else, you have at least four options:
1. Work out an agreement with the current registrant.
2. Wait and see if the current registrant lets it expire.
3. File a lawsuit in court against the current registrant.
4. For cases involving "abusive registrations" (this is a narrow category, so you should proceed with caution), begin an administrative proceeding under the Uniform Domain-Name Dispute-Resolution Policy. For more details on this option, see Uniform Domain-Name Dispute-Resolution Policy Here.
If you decide to file a complaint under the UDRP, you'll need to do so via one of ICANN's four approved domain-name dispute-resolution service providers:
(Please note that the answer above applies only to domain names in .com, .net, .org, or other generic Top Level Domains operated under contract with ICANN such as .biz, .info or .name. Dispute resolution policies vary in other TLDs such as .gov, .edu, or .us and the 240+ other country code Top Level Domains. Please note also that ICANN generally recommends seeking legal advice before deciding which of the above alternatives is best in any particular situation.)
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