Cybersquatting Hotel and Resort Trademark Protected Names

Our cybersquatting attorneys represent one of the largest premium resort chains in South America and have been in litigation on cybersquatting claims under the Anticybersquatting Consumer Protection Act against a travel agency which registered over 20 domain names which include our client’s marks.  That ACPA litigation (BD Real Hoteles, S.A. de C.V. v. VacationTours, Inc., Media Insight Group, Inc., et. al.) has been pending in Miami Florida since January 14, 2008.  Our attorneys were able to secure a large block of those domain names under the Uniform Domain Name Dispute Resolution Policy (UDRP) from the travel agency in favor of our resort hotel client in a fairly unusual case.

Cybersquatting American International Group

DomainFight.net reports the following Uniform Domain Name Dispute Resolution Policy Proceedings brought by American International Group, Inc. (AIG), on October 8, 2006.  DomainTools.com reports the following typographical variations of “AIGInsurance”, most of which are cybersquatted WIPO typographical variations of the AIGInsurance.com domain.  These results don’t include the typosquatting on American International Group’s primary website, AIG.com.

It looks like American International Group did a better job protecting its domain name than it did running its business.

Domainers Take A Stand Against Cybersquatting: Rick Schwartz’s Silicon Valley TRAFFIC Show Will Focus on Eliminating Cybersquatters from the Community.

There was time when cybersquatting was pursued vigor as business model.  After trademark attorneys and their clients turned up the heat, attitudes changed somewhat.  Domainers sought to clean their portfolios of cybersquatted domains in order to avoid domain disputes under the UDRP and ACPA.  Several years ago, many top domainers really started to “talk the talk” lashing out against “black hat” cybersquatters within their midst.  Now, Rick Schwartz and Howard Neu have turned up the heat.  Realizing that cybersquatting may be more of a threat to the domainer industry itself, then to trademark holders, Rick appears to be signaling that the upcoming TRAFFIC Show in Silicon Valley (go ahead and register if you want to be a part of this event) will devote content and commentary to the issue of how cybersquatting hurts the domainer business, sours relationships with major players such as Google and Yahoo! and causes advertisers to opt-out of the domain channel.  Here’s the money quote:

Napster Teaches Us That Cybersquatting Can Best Be Fought By The Domainer Community

Alex Tajirian has an interesting post on CircleID about an issue which is getting lots of attention over the last 24 hours. Andrew Allemann wrote an editorial yesterdaytitled "How the Domain Industry Can Clean Itself Up" which we followed up on in a post "Do Domainers Deserve Their Repuation As Cybersquatters Because They Fail To Police Their Own?" Allen's post drew a lot of commentary, mostly supporting the prposition that it is time to step-up the self-policing of cybersquattign by the domain community. Alex Tajirian's post (coincidentially I think) analyzes the legal proceedings related to Napster, conlcudes that lawyers can not stop illigal practices on-line and provides specific ideas on how the community should self-police agasint domain name trademark abuse and on-line brand protection.

Domain Name Lessons from Napster

What can be done?

The domain name industry should get the message out to Internet users and brand owners that:

1. Indiscriminate legal action exasperates the problems associated with the use of brands in domain names.
2. A solution cannot come only from the side of the domain name industry; a cooperative solution is imperative.

The domain name industry is serious about fighting illegal use of brands in domain names.

How should our industry react?

1. Initiate media campaigns.
2. Openly discuss solutions in domain name conferences, as they are also attended by the media and brand owners.
3. Lobby Congress through the Internet Commerce Association (ICA) and domainer activism.
4. Discuss the problem and possible solutions in domain name forums and other relevant forums.
5. Take action against current monetizers that continue sponsoring obvious domain name violations.

Here are some comments from Andrew's DomainNameWire post.

• Sign me up…..I just put pressure on Godaddy yesterday by speaking to one of their “Quality Control” reps that wanted my opinion on Godaddy and TDNAM.
• Well done Andrew. Every VERY obvious TM infringing opportunity I find, I call the company’s legal department ask to speak to their IP lawyers and tell them about the obvious names that obviously infringe on THEIR intellectual property.
• I actually got a bit flush and panicky when I saw the Mozzilla.com sale. I felt a bit sick too. I was initially irritated that Ron listed it, but quickly got my wits about me - as he is just reporting these sales.
• Call the TM infringers on it. It’s wrong. It can’t be defended. And anyone with a modicum of good sense will not infringe on another’s trademark.
• I think a lot of people use the argument that companies shouldn’t police trademark sales on their auction sites because it’s difficult to “draw the line” between a real trademark and a bogus claim.

Technorati Tags: cybersquatting, brand, trademark, UDRP, ACPA

The Three Views of Trademark Cybersquatting

We all know the formal definition of cybersquatting under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA).  But in the blogosphere, people use the word cybersquatting to mean a variety of different things.  The good news for both, trademark holders and domainers, is that both the courts under the ACPA and Arbitration Panels at WIPO and NAF under the UDRP continue to become more consistent in their definition and application of cybersquatting principles in their decisions.  As an attorney, consistency is the one element which allows us to advise our clients and allows clients to make informed business decisions based on a risk/reward analysis.

One of the challenges for internet attorneys working on cybersquatting issues is the relative inconsistency and how the word “cybersquatting” is used in on-line discussions on the internet.  The same is true for related terms such as “reverse domain hijacking”, a concept wherein a trademark holder attempts to use the UDRP or ACPA to essentially steal a domain away from a legitimate domain registrant who did not register the disputed domain in bad faith, or is using an otherwise trademarked protected domain in a non-infringing way.

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.

McAfee Report - State Of Typosquatting 2007

Typo-squatting, the practice of registering domains using common misspellings of popular brands, products and people in order to profit from consumer typing errors, is increasing dramatically. McAfee recently did a comprensive study of typosquatting, as part of its effort to filter web traffic with its anti-virus and security system.  Read the McAfee Typo-Squatting Report here.

In an effort to further quantify and understand this phenomenon, McAfee studied 1.9 million typographical variations of 2,771 of the most popular and well known Web sites. Of these, we found 127,381 suspected typo-squatters.