Trademark Attorneys Specializing In Cybersquatting, Domain Theft, Domain Disputes & On-Line Brand Protection

Our internet law attorneys specialize in cybersquatting and trademark matters including cybersaquatting, domain disputes, domain name theft, WIPO / NAF arbitration, Uniform Domain Name Dispute (UDRP), Anti-Cybersquatting Act Litigation in Federal Courts across the United States. Don't settle for attorneys who think they can 'figure it out.'  Our trademark and domain dispute attorneys have handled some of the highest profile cybersquatting cases for some of the largest companies in the world.     

 

 Managing Partner Enrico Schaefer: "Traverse Legal's internet law attorneys know trademark and cybersquatting law and pride themselves on advanced litigation techniques which are both cost-effective and budget oriented.  From Stolen domain names to mass cybersquatting, we understand the internet, back-end DNS, ISP and hosting issues at a technical level which allows us to focus on results. There are very few firms that can match our ability to get back-end registry level data in order to put your best leverage in play. We understand the Internet and the technology which drives it.  Because we are a boutique litigation law firm, we know how to strategically and efficiently accomplish our client's goals. "

If you have a trademark, domain name dispute, domain theft 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).

Overdrive, Inc. Found Liable For Cybersquatting: Plaintiff Awarded $74,500.00 Plus Reasonable Attorney Fees

Traverse Legal cybersquatting law attorneys obtained judgment on behalf of their client against full-service digital distributor of eBooks, audiobooks, music and video company Overdrive, Inc. for cyber-piracy (aka cybersquatting) and breach of contract.  On January 10, 2013, Judgment was entered in the United States District Court for the Western District of Michigan, Southern Division against Defendant Overdrive, Inc.for the amount of $74,500.00 plus costs and reasonable attorney fees.  The $74,500.00 (out of a maximum award of $100,000) award against Overdrive, Inc. was for statutory damages under the ACPA.  The total award, with attorney fees, could exceed $200,000.  Further, Overdrive, Inc., was ordered to transfer the domain name “forwardreviews.com” (a typographical variation of Plaintiff’s trademark protected domain forewordreviews.com) to Plaintiff.  This cyber-squatting and cyber-piracy judgment against Overdrive, Inc., is one of the largest jury awards for trademark infringement on a domain name under the Anti-Cybersquatting Consumer Protection Act (ACPA) 15 USC § 1125(d)(m).

Case Name:  ForeWord Magazine, Inc. v Overdrive, Inc., United States District Court, Western District of Michigan, Southern Division, No. 1:10-cv-01144. The case is on appeal as of March 2013.

Representing OverDrive, Inc.:  Lester S. Potash – Attorney.

Company Representatives For Overdrive, Inc. Steven Potash (CEO) and Mike Vantusko (CFO).

OverDrive is funded by Insight Venture Partners, a private-equity firm that focuses on technology companies.  Overdrive’s key products and services:   OverDrive Media Console, OverDrive Read, OverDrive Media Station, Content Reserve.

BACKGROUND of ACPA

Online extortion comes in many forms and occurs all too often on the internet.  Whether it is people extorting companies by registering and using company names, typographical variations of company names or misdirecting Internet traffic to competing websites, cyber-squatting or cyber-extortion remains a serious problem.  As noted by Spencer Abraham, one of the sponsors of the ACPA:

On-line extortion in any form is unacceptable and outrageous. Whether it's people extorting companies by registering company names, misdirecting Internet users to inappropriate sites, or otherwise attempting to damage a trademark that a business has spent decades building into a recognizable brand, anyone engaging in cyber-squatting activity should be held accountable for their actions.

 As noted in Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002), "Cybersquatting is the Internet version of an unlawful land grab. Cybersquatters register well-known brand names as Internet domain names in order to force the rightful owners of the marks to come forward and pay for the right to engage in electronic commerce under their own name."

BACKGROUND OF LAWSUIT AGAINST DEFENDANT OVERDRIVE, INC.

UDRP Complaints on Hotel Names Continue to Rise

As an attorney who represents a number of hotel and resort chains around the world on UDRP and cybersquatting matters, I see hotel names as one of the primary areas of cybersquatting on the internet.  Because of the number of vendors who feed off of the hotel, resort and hospitality industry, this particular industry segment is ripe for cybersquatting.  Everyone from travel agents to typo-squatters like to divert traffic from hotel and resort domain names to thier own websites often with pay-per-click advertising links as the only content (parking pages).

Can I Recover a Lost Domain Name for My Business?

Can I recover a lost domain name for my business? As a domain name lawyer, I hear this kind of question all the time from small businesses to large companies, from Internet startup companies and venture backed capital companies all the way on up to companies that are doing hundreds of millions of dollars in revenue per year. Companies and businesses, startups lose their domain names all the time, and it's not something that you want to happen to you or your company or business.

Play: Can I Recover a Lost Domain Name for My Business?
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With: Enrico Schaefer

Sponsored by: Traverse Domain Name Law

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Reverse Domain Name Hijacking

When you file a WIPO or NAF UDRP proceeding, you need to make sure you know what you're doing as the trademark holder or complainant.  Just because you want a domain which someone won't sell to you, does not mean you can file a Uniform Domain-Name Dispute-Resolution Policy (UDRP) arbitration to seek a forceful transfer of that domain name to your possession from the registrar.

What Happens after a UDRP?

A UDRP is an arbitration under the Uniform Dispute Resolution Process and Policy that allows someone to file a complaint with an arbitration forum, usually WIPO or NAF, and get a decision usually within 30 to 45 days. As part of that UDRP, they must establish three things. One, ownership of a trademark that the domain name is confusingly similar to; two, that the registrant and user of the domain name doesn't have any legitimate rights or interest to that domain name; and three, that the registrant of the domain name actually registered it and used it in bad faith.

Play: What Happens after a UDRP?
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With: Brian A. Hall

Sponsored by: Traverse Domain Name Law

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The Best Evidence of Bad Faith Intent to Profit when Proving a Violation of the Anticybersquatting Consumer Protection Act

The Anticybersquatting Consumer Protection Act or ACPA defines cybersquatting in a very loose way, and in order to be found guilty of unlawful cybersquatting, in order that they show that you've engaged in bad faith cybersquatting with a bad faith intent to profit from their trademark, they're going to have to show that you intentionally targeted their trademark. Of course, many domainers use this bad faith intent to profit element as their defensive shield, because a domainer will say, "I didn't know about the trademark," or that, "I registered so many domains that I can't possibly determine what is trademarked."

Play: Bad Faith Intent to Profit when Proving a Violation of the Anticybersquatting Consumer Protection Act
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With: Enrico Schaefer

Sponsored by: Traverse Cybersquatting Law

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Domain Name Squatting: Beware The Trademarks

Domain name squatting is unlawful under both the Uniform Domain Name Dispute Resolution Policy, or UDRP, as well as the Anti-Cybersquatting Consumer Protection Act, known as the ACPA. And domain name squatting has serious consequences. Because it is a form of trademark infringement, an attorney will advise you that if you receive a threat letter accusing you of domain name squatting, that you potentially could be liable for a lot of money in damages. You certainly don't want the people who are sending you the threat letter on behalf of the trademark owner or their attorneys to file a lawsuit against you in federal court claiming that you are engaged in domain name squatting or cybersquatting.

Play: Domain Name Squatting: Beware The Trademarks
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With: Enrico Schaefer

Sponsored by: Traverse Cybersquatting Law

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How to Defend Against a Claim of Cybersquatting: Litigation Stories from the Jury Box

So, you've been accused of cybersquatting under the Anticybersquatting Consumer Protection Act. You've received a trademark infringement and cybersquatting threat letter from a trademark owner saying that you've engaged in bad faith cybersquatting. The trademark owner has a registered trademark dully filed with the United States Patent and Trademark Office and it's been registered since 2002.

Play: How to Defend Against a Claim of Cybersquatting: Litigation Stories from the Jury Box
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With: Enrico Schaefer

Sponsored by: Traverse Cybersquatting Law

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South African Man Wins Domain Name Dispute Over Generic Two Letter Domain Name

Traverse Legal domain name dispute and website attorneys helped the website owner/registrant of the disputed domain name, va.co.za, to win a domain name dispute on appeal in a South African court. After initially suffering an adverse decision by the Adjudicator, the website owner prevailed on appeal and was able to retain possession of the disputed website. The Appeal Panel found that although a two letter generic domain name is possibly trademarkable, the complainant (owner of the device mark containing “V&A”) in this case failed to provide sufficient evidence to prevail on its trademark infringement and common law claims.

The V&A Waterfront filed the complaint with the South African Institute of Intellectual Property Law (“SAIIPL”). At the lower court level, a SAIIPL court Adjudicator rendered his decision in favor of V&A Waterfront on April 12, 2012. However, registrant/owner of the va.co.za website, Mr. Brandon Davids, appealed the SAIIPL Adjudicator's decision. Following Davids' appeal, on June 22, 2012 an Appeal Panel for the SAIIPL appellate court reversed the Adjudicator's decision and this time ruled in favor of Davids.

The complainant, V&A Waterfront, is the owner of the South African destination hotspot known as V&A Waterfront property, located in Cape Town, Western Cape, South Africa. Along with being voted South Africa's number one tourist destination, V&A Waterfront boasts more than 20 million annual visitors and during the 2010 Soccer World cup alone it hosted more than 3 million visitors.

New gTLD Application Thoughts: The difference maker will be Google

The new gTLD applications are in and those of us in the Internet log, domain name space have been thinking about the new gTLD process for years. ICANN has talked about the new gTLD process for years, and finally we have a list of applicants for new gTLD's top-level domains. Of course, we were all really surprised to learn about a month ago that the number of applications was well beyond what most people thought. It was unclear who was going to be applying for new domain name extensions and how well adopted things might be received in the Internet community. There has been certainly a lot of commentary in the domainer space against new gTLDs because, of course, a lot of domainers own a lot of high value .com domains, and any new TLDs that compete with the .com world are a potential  threat to the domain name portfolios held by many people.

 

Play: New gTLD Application Thoughts: The difference maker will be Google
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With: Enrico Schaefer

Sponsored by: Traverse Domain Name Law

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The Auction for New gTLD Applications

If you go through the list, there is a large number of applications which are going to end up in the gTLD auction process where these TLD applicants are going to have to bid against each other potentially if they can't negotiate between themselves a resolution about who gets to offer the gTLD and under which application, under which business model.

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With: Enrico Schaefer

Sponsored by: Traverse Domain Name Law

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How to Oppose a New gTLD Application

ICANN has greatly expanded the number of top level domains that are going to be available as registries for people to potentially register domains on. And they have just issued their list of new gTLD registry applications that have been submitted. So, there are a large number of TLDs that have now been put into play. For instance, American Automobile Association has registered for .AAA, dot triple A. AARP has filed for a registry application for .AARP, and there is any number of TLDs that are now in play to become registries. Once those registries are set up, the registries will craft their own rules for who can register domain on that gTLD.

 

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With: Enrico Schaefer

Sponsored by: Traverse Domain Name Law

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What to Do When a Domain Name Lease Goes Wrong

Well, the first thing I want  to point out is when a domain name lease agreement is put together, which essentially allows a domain name owner or registrant to, for a certain period of time and under certain terms and conditions, allow a third party to use that domain in a certain way.  When a domain name lease agreement is put together, there’s usually an allowance as to who maintains registration of the domain name.  In some instances, the lessor or owner of the domain name originally.  In other instances, the registrant becomes the lessee or person who will be using the domain name.  As a domain name attorney, I typically would like the lessor to retain registrant ownership of the domain, so that there can’t be what is appearing to be a growing instance of the lessee taking ownership of a domain and not returning it at the end of the actual lease agreement.  Essentially, they are holding it hostage in hopes of either extending the lease or affecting an ultimate sale of the domain name from the original registrant to the lessee.

Play: What to Do When a Domain Name Lease Goes Wrong
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With: Brian A. Hall

Sponsored by: Traverse Domain Name Law

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What is Reverse Domain Hijacking?

The first way is, under United States law, the Anti-Cybersquatting Consumer Protection Act, also known as the ACPA, allows for somebody to file a complaint, and if they can successfully establish that they have trademark rights in a domain name, and that it was registered or used in bad faith, with an intent to profit, then they can get the domain transferred to them and also get statutory damages up to $100,000 per domain name.

Besides that ACPA legislation, there is also what's known as the UDRP, or Uniform Dispute Resolution Process. Which is an arbitration that allows somebody to file complaint and have an arbitration panel decide, usually within a 30- to 60-day time frame, whether or not the domain should be transferred to the person that filed the complaint.

Usually what happens is one of those two things has occurred, either they have filed a UDRP or they have filed a ACPA law suit. What the defendant or the domain name user registrant or user says is, "I have legitimate rights in this domain, I'm not cybersquatting, and what you're trying to do constitutes reverse domain name hijacking."

 

Play: What is Reverse Domain Hijacking?
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With: Brian A. Hall

Sponsored by: Traverse Cybersquatting Law

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New gTLD Trademark Clearinghouse - How To Protect Your Trademarks.

The Trademark Clearinghouse concept is an important part of the new gTLD roll-out. The trademark clearinghouse will be available for new gTLD registries to support pre-launch Sunrise or Trademark Claims Services. Each new gTLD though wil have some leelway regarding trademark infringement claims and dispute resolution. Your trademark portection lawyers can help you craft a strategy to make sure you  take advantage of the approximately 3 months for rights holders to begin recording trademark data in the Clearinghouse before any new gTLDs begin accepting registrations (estimated in January 2013).

TRADEMARK CLEARINGHOUSE

11 JANUARY 2012

1. PURPOSE OF CLEARINGHOUSE

1.1 The Trademark Clearinghouse is a central repository for information to be
authenticated, stored, and disseminated, pertaining to the rights of trademark holders.
ICANN will enter into an arms-length contract with service provider or providers,
awarding the right to serve as a Trademark Clearinghouse Service Provider, i.e., to
accept, authenticate, validate and facilitate the transmission of information related to
certain trademarks.