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 Law Firms | Cybersquatter Targets Mumford & Sons

Cybersquatting and Domain Dispute Update:

In our latest cybersquatting law firms news, Grammy performers Mumford & Sons look to be victims of cybersquatting / typosquatting trademark infringement.  Below are results from domaintool's domain typo search tool for the domain name mumfordandsons.com: 

Mufordandsons.com
Mumfordandson.com
Munfordandsons.com
Mumfordandsons.com
Mumfordandsons.net
Mumfordandsons.org

High traffic domains and high-profile celebrities and their domains are contantly under attack from habitual cybersquatters.  Take a look at the UDRP complaints filed against habitual cybersquatter, Ho Nim, in this Domainfight.net report.

 

 

 

Trademark Protected Brands are NOT registering defensively in gTLDs

A recent survey of over 1000 registered trademark brands owned by Fortune 100 companies show that Brands aren't defensively registering domain names as was originally predicted. Antony Van Couvering discusses the results of the survey in regards to defensive registration and cybersquatting with Damien Allen on today's program.

• Brands registered as trademarks prioritize where they are going to make defensive registrations

• In dot.com registration, 100% of these brands are registered trademarks. In dot.org, 75%, dot.biz is 65% and dot.travel only 10% were registered.

• In the new open TLDs since dot.biz and dot.info were introduced in 2001, the aggregate is only 29%. Both in brands and any cybersquatting.
•  Trademark registration is they most important thing you can do to protect your company name and brand on-line.

Play: Survey Finds Brands Are Not Defensively Filing in gTLDs
(click title to listen)

With: Antony Van Couvering

Sponsored by: Traverse Trademark Law

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Announcer: Welcome to Trademark Law Radio sponsored by Traverse Trademark Law, internet lawyers specializing in Trademark Infringement, Trademark Licensing and Trademark Registration. Now, here’s your host, Damien Allen.

Damien Allen: Good afternoon and welcome to Trademark Law Radio. My name is Damien Allen and joining me today on the phone is Antony Van Couvering of Minds and Machines. Good afternoon, Antony. Welcome to the program.

 

Antony Van Couvering: Hi, Damien. How are you?

Cybersquatting the Microsoft Brand: Getting Tough on Trademark Infringement

There has been significant commentary recently on bulletin boards and within the domainer community about Microsoft Corporation's stepped-up online brand protection efforts.  Microsoft has been aggressively pursuing any and all domain registrants who have registered domains incorporating any of the Microsoft brands.  Instead of a simple domain transfer upon being noticed, Microsoft is demanding money compensation from virtually all domain registrants which Microsoft believes are infringing on their trademark-protected brands. 

If you have a trademark or cybersquatting issue you may contact one of our trademark and domain dispute attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Are you wondering what kind of Uniform Domain Name Dispute Resolution proceeding have been filed by Microsoft at either WIPO or NAF?  Check out the domainfight.net results for a search of “Microsoft” as a UDRP complainant. 

Domain Parking Pages to Be Excluded From Google's Advertising Network?

The following news story has been posted without confirmation. Even so, how long will it be before Google and Yahoo eliminate certain domains from its network in order to get click fraud under control. At the recent T.R.A.F.F.I.C Conference in Orlando, a Google executive made an appearance and warned domainers that Google was going ot be taking more aggressive action against click fraud. The suggestion is that some domainers create clicks, through software programs or human schemes, on the ads on their parked pages in order to fraudulently create adword revenue. Of course, advertisers using the Google adwords program are getting better at auditing click fraud and asking for refunds from Google.

Google Parking Changes Approaching « Is it me or is everyone else stupid?

From a reliable source Im told that Google has had enough of domain parking, though not all elements of it it seems. [the recent class action filing by Boston attorney Hal Levitte not being relevant at this point]. Google apparently have gotten fed up of policing their AFD program and are about to become proactive with a new domain parking algorithm.

This new algo will assess all domains calling their parking feed and immediately give domains either a “pass” or a “fail” score. Meaning that if Google decide your domain has little chance of type-in traffic or if it scores low on conversions, it wont serve you a parking feed. Simple as that. The details on what percentage of parked domains this will negatively affect is sketchy at best, but you can bet your bottom dollar the numbers will be significant.

A follow up post reporting that "over 90% of the high earning parked domains (those earning above $1k per month) are typos of another site or of a TM holder’s site" and  "Only 10% of the high earning parked domains are truly generic."
Technorati Tags: domain parking, google, click fraud

Domainers Can't Have It Both Ways: Until Blatant Cybersquatters Are Exterminated, All Domainers Will Suffer

It has always amazed me that domainers take such umbrage to the UDRP, ACPA and other cybersquatting provisions, while doing nothing to provide disincentives for these laws to exist.  I don’t know what the actual percentages are, but the number of domains registered which are clearly cybersquatting someone else’s famous trademark must be extremely high.  We have clients who have literally hundreds of blatant cybersquatters sitting on typos of their various domain names.  Virtually any company with significant traffic has typosquatters diverting traffic for their own PPC revenue.  The cybersquatting problem continues to grow while, at the same time, legitimate domainers work hard to legitimize domain monetization practices.

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.

UDRP: Lack of Use of a Domain is NOT Always a Defense

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).

You Are A Legitimate Domainer If ... You Do Not Cybersquat

There is a major perception problem that all domainers are cybersquatters. Of course, this is not true.  Cybersquatters target well know brands and trademarks, as well as typos of those marks.  Domainers target generic words that have limited or no trademark rights.  The White Hat Domainers often get lumped in with Black Hat Cybersquatters.  This misconception is typified this 'tongue-in-cheek" post on the Domain Kid Blog  as set forth below.  Notice how it implies that cybersquatting activities are inherent in domaining.

… you consider Whois a social network.
… you still refer to Zuho as SwapNames.
… you’re not a lawyer but can recite trademark laws from memory. (ES:  White Hat Domainers should know trademark law or hire a trademark attorney to steer clear of threat letters)
… you own some sort of iphone related domain name. (ES: Targeting well known brands is NOT an attribute of legitimate domaining)
… your backlink quality is more important than your quality of friends.
… two words: ICANN
… you’ve ordered chips & Dotsauce.
… you knew GoDaddy before he was even a father.
… you’ve been in a fistfight because someone has dissed your Pagerank.
… you’ve registered a celebrity’s name. (ES: Targeting well known surnames and celebrities is NOT an attribute of legitimate domaining)
… you consider parking nothing to do with an automobile.
… you’re favorite quote is "may the Rick Schwartz be with you."

What Every Domainer Needs to Know About Trademarks before Registering Domain Names

I was recently interviewed by Modern Domainer Magazine about trademark issues. In this article, I discussed a variety of trademark issues for domainers who wish to extend their domain name value by also registering trademarks and as due diligence prior to registering domains in order to avoid trademark infringement threat letters and lawsuits.

You can read the entire article here.