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

Our attorneys specialize in cybersquatting and trademark matters including 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 attorneys know trademark and cybersquatting law and pride themselves on advanced litigation techniques which are both cost-effective and budget oriented.  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 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).

Brandjacking and Cybersquatting Continues to Grow

MarkMonitor® has reported that the online abuse of leading brands rose in 2008.  The report stated that 80% of the abusive sites in 2007 were still active in 2008.  Cybersquatting continues to rank highest as the means for exploiting brands.  MarkMonitor’s® Brandjacking Index investigates trends on how the most popular brands are abused online and the industries causing the most abuse.  It appears that the companies most successful in fighting abuse defend their brand at the highest levels of management.  It appears that the United States, Germany and the United Kingdom host the majority of brandjacking websites.  Phishing has increased tremendously in the financial services, up 135%.

Cybersquatting Hotel Names: Findings of Trademark Infringement and Cybersquatting Under the UDRP Against Media Insight.

Domainfight.net reports the following cybersquatting complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Respondent Media Insight aka Media Insights brought by major hotel chains.  Cybersquatting domain name trademarks owned by hotels and resorts has continued to increase over the last several years.

The Importance of Registering Your URL on Facebook

On Saturday, June 13, 2009, at 12:00 a.m. EDT, Facebook will allow users to create their own URLs for their profiles.  It is extremely important for those who have Facebook pages for their organizations/businesses to register their trademarked name.  Domain Name Wire stressed the rules Facebook will be using to prevent domain squatting from happening.  First, you can never transfer your profile.  Second, there is a trademark policy enforced on Facebook.  Lastly, anyone creating an account after announcement of username availability will not be able to select a username initially.  Once you have your username accepted, this will make it easier to advertise on your business card and in emails.

Protecting yourself and your company from trademark infringement on Facebook

Facebook is allowing personalized URLs to be added to accounts. On Tuesday, June 9, Facebook, Inc., a social networking website company based in the United States, publicly announced that beginning Saturday, June 13th at 12:01 a.m. U.S. EDT, users of the Facebook website will be allowed for the first time to create personalized URLs for their Facebook pages (facebook.com/yourname).  If you do not secure your name or your company name for your facebook page, someone else might do so causing confusion, trademark infringement and raising the possibility of fraud.

Facebook, Inc. has created an online form for rights owners interested in preventing their trademarks from being registered as usernames by Facebook users.

Trademark owners can reserve their trademark on the Facebook platform by submitting relevant information to Facebook, Inc. through their trademark protection contact form, available at Facebook's trademark rights page.  If you have further questions or concerns, please contact Facebook directly or see its Frequently Asked Questions (FAQ) page.

For more information about the growing threat to personal names, trademarks and brands on facebook and twitter read "The Growing Threat to Trademarks and Personal Names: Social Network Cybersquatting."

Bill Clinton Loses UDRP Cybersquatting Arbitration - Inconsistency Still a Big Problem With UDRP Decisions

As being reported at HuffintonPost.com and Domain Name Wire, President Bill Clinton lost his Uniform Domain Dispute Resolution Policy (UDRP) NAF arbitration for the domains <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com>, registered with The Name It Corporation d/b/a Nameservices.net.  Essentially, the arbitrator/panelist Glen Ayers found that:

1. Respondent’s disputed domain names are confusingly similar to Complainant’s WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i). Thus the first element of the policy was satisfied.
2. Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).
3. Respondent has not registered or used the disputed domain names in bad faith; Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

As noted below, the arbitrator's decision is questionable as a matter of common sense and UDRP precedent.  One problem that continues to persist under the UDRP is the disparity of experience, understanding or trademark law and established bias (both pro-Complainant and pro-Respondent) of UDRP arbitrators.

Additional resources regarding the issue of cybersquatting famous, celebrity and politician names:

• Celebrity Cybersquatting: Why Don't Famous People Protect Their Domain Names?
• Personal and Proper Names Protected Under Anti-Cybersquatting Act  
• Cybersquatting On The George Bush Library Name
• Political Candidate Cybersquatting: Hillary Clinton's Name Most Squatted

.cm Domain Registration: Sunrise Period For Trademark Owners Begins June 15

Trademark Infringement Alert:  .cm is the Top Level Domain for Cameroon and unfortunately a target for cybersquatters and typosquatters due to “cm” being a common typographical error for the most popular TLD ”com”. NetCom is the registry for the .cm domain names. 

Trademark owners need to take advantage of the short 'sunrise' period to register their brands and trademarks before registration opens up to third parties, some of who will be looking to cybersquat and typosquat on trademarks.

Expert Advice for Avoiding Complaints about Your Gripe Site

Here is an excerpt from an article posted on the Electronic Frontier Foundation (EFF) blog called, “Avoiding Gripes About Your Gripe (or Parody) Site.”   The article provides several tips and tools gripe or parody site owners can use in order to avoid trademark and copyright infringement claims.  Here are the six recommendations by the EFF:

UDRP: Know Your Arbitrator

We have expressed the importance of knowing your UDRP panelists in any Uniform Domain Name Dispute Resolution Policy (UDRP).  A recent UDRP arbitration decision has received attention after an arbitrator chose not to exercise his discretion and, therefore, did not consider a response filed within one hour of the response deadline.  Not only has the merit of the decision itself been called into question, but the action of the arbitrator himself has been discussed as well in an article entitled: UDRP Arbitration: A Case of Laziness?. 

Notice of Class Action Settlement in the Matters of McElroy v. Network Solutions LLC, et. al, Case No. CV 08-01247 PSG (VBKx) Finseth v. Network Solutions LLC, Case No. CV 08-01537 PSG (VBKx)

IN THE UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA

In The Matters of
McElroy v. Network Solutions LLC, et. al, Case No. CV 08-01247 PSG (VBKx)
Finseth v. Network Solutions LLC, Case No. CV 08-01537 PSG (VBKx)

NOTICE OF CLASS ACTION SETTLEMENT

Cybersquatting the Social Networks: A New Trademark Risk

WebProNews has recently published a couple alarming articles concerning name squatting on social networks such as Twitter and Facebook. The author, Chris Crum, correctly notes in his article titled “Cybersquatting Goes Social” that cybersquatting continues to be a growing problem on the Internet (see Figure 1.).  However, he brings to light another growing problem that trademark owners face as cybersquatters partake in the unethical and illegal practice of registering trademark protected brands with the popular social networking sites such as Twitter and Facebook.  

Domain Name Registrars & Cybersquatting: How The ACPA Applies To GoDaddy Parked Pages

We are often asked with Registrars are liable for cybersquatting, domain theft, trademark infringement, negligence in failing to process domain registrations and other issues. Under the Anti-Cybersquatting Consumer Protection Act, registrars have some protection from cybersquatting allegations, but they are not absolute. Registrars such as GoDaddy who offer parking solutions for themselves and their registrants can be held liable under the ACPA.

Cybersquatting and the UDRP: The US and .com Lead the Way

The World Intellectual Property Organization (WIPO) has issued a recent report concerning the number of filed cybersquatting complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) over the last ten years.  According to an analysis done by CircleID Reporter titled “Latest Cybersquatting Stats from WIPO”, the U.S. ranked the highest at 43.81% out of the top 15 countries represented for having the greatest number of filed UDRP complaints in the last ten years.  From December 1999 to December 2008, approximately 14,663 UDRP cases have been filed involving more that 26,000 domain names. Of the domain names included in the report, .com domains was reported to be the most prevalent domain extension involved in cybersquatting claims filed under the UDRP. See the results of the report below:

Cybersquatting the United States Postal Service: Return Domain to Sender.

When it comes to cybersquatting, the United States Postal Service appears to be the most aggressive government agency or department to protect its trademarks.  This UDRP search for “United Postal Service” as the complainant on domainfight.net reveals the following tidbits:

Texas International Property Associates Is a Habitual Cybersquatter

Cybersquatting trademark domain names is a favorite pastime of Texas International Property Associates.  Check out these search results on domainfight.net for Texas International Property Associates as a Respondent in domain name disputes for both NAF and WIPO.  Note the WIPO returns are only partial and the extended returns on NAF show 126 records.

Cybersquatting Domain Trademarks: Update On .ME Domain Name Disputes

The .me domain name has clearly earned its place in the market as a preferred domain.  And not unexpectedly, cybersquatting using .me domain extensions has also found its place in the domain name game.  Ever wonder what .me domains are being squatted? 

Check out the list of NAF and WIPO .me cybersquatting decisions and proceedings provided through DomainFight.net and you’ll find that Porche, Exxon Mobil, Blue Cross & Blue Shield, Mozilla Corporation and the Coca Cola Company have all been victims of .me cybersquatting.

Cybersquatting Trademark Protected .me Domains: A Lesson for New gTLDs which ICANN Has Failed to Learn.

As can be seen by a WIPO & NAF serach using DomainFight.net, cybersquatting .me domains was a popular pastime in 2008 including trademark protected domains owned by Porsche, Exxon Mobil, Blue Cross and Blue Shield, America Online,     Mozilla Corporation and The Coca-Cola Company.  This does not include the threat letters sent out by trademark holders, which in many instaces cause a behind the scenes and unreported transfer of domains. 

As noted over at The Domains blog "Toyota.Me Sell for 90K: Why Shouldn’t a Registry Be Liable for Profiting From the Sale of Trademark Infringing Domains?" Each time a new domain extension is introduced, it simply creates a brand new platform for domain name cybersquatting. It is even worse when the Registry offering the domains thorough auction or otherwise end up reaping the initial financial rewards of obvious trademark infringement.  Where is the accountability?  Why hasn't ICANN done anythign to make registries and registrars more accountable for trademark issues?

In their comments to ICANN concerning the new domain extensions, The Domains blog makes an important point.  If the number of domain extensions,  gTLD’s, is greatly expanded, how will trademark holders, celbrities, famous people and others protect themselves from bad faith cybersquatting? See Open Letter To ICANN: Our Take On the New Domain Extensions

Understand Your Trademark Rights George Bush! Avoid Overpaying $35,000 to Get Your Domain Back From A Cybersquatter

Repeat after me everybody.  Personal and Proper Names Are Protected Under Cybersquatting Act And the Lanham Act. Here is  story that makes you think you ought do a Google search for the word 'cybersquatting attorney' or 'domain name lawyer' before shelling out big cash to pay for a domain name which incorporates your personal name or trademark.

Developer for George W. Bush library Web site paid $35K to buy back domain name | News for Dallas, Texas | Dallas Morning News | Breaking News for Dallas-Fort Worth | Dallas Morning News

Illuminati Karate paid less than $10 for the www.GeorgeWBushLibrary.com domain name – and sold it back for $35,000 to the library's contracted Web developers, Yuma Solutions, who had accidentally let it expire. Illuminati Karate recognized what the library obviously knew as well – that anything else, like www.GWBPresidentialLibrary .com, would have been cumbersome and less than ideal.

"It worked out very well," said George Huger, lead Web developer for Illuminati Karate in Raleigh, N.C. Mark Mills, owner of Yuma Solutions, could not be reached for comment.

The real head-scratcher here is that Yuma Solutions didn't have to pay anything to get the domain back from Illuminati Karate, who was clearly cybersquatting on the domain and trademark rights of the library and George Bush personally.   We posted about this previously at Cybersquatting On The George Bush Library Name. Didn't they consult and trademark attorney or cybersquatting laywer first? Of course, they still may have their $100,000 in statutory damages under the ACPA and Lanham Act to leverage if they did not sign a global release.  The domain sale simply proves bad faith under both statutes.

Cybersquatting Attorneys: Recent Cybersquatting Cases and Issues across the World Wide Web

Traverse Legal’s lawyers constantly monitor the latest information on the World Wide Web concerning cybersquatting cases and issues. Here is this week's round-up:

Chineese Domain Scam
By admin
As authorized anti-cybersquatting organization we hereby suspect the alleged Meiao Co.,Ltd to be a domain grabber. Hence we need you confirmation for two things, First of all, whether this alleged Meiao Co.,Ltd is your business partner ...

typosquatting
By renamecor
Is it still classed as cybersquatting if you are actually sending them the visitors via an affiliate link / code ? Basically doing what they should have already done (ie bought the typo url). Now I understand that most affiliate ...

Domain Names and Trademarks - Legal Issues
Search Engine Roundtable - USA
Both enacted in 1999 to deal with cybersquatting. UDRP is like biding arbitration. Less formal. No hearing. ACPA on the other hand is more involved, ...

New gTLD Applicant Guidebook Released: A Domain Name Owner's Guide to Applying for and Being Awarded a New Domain Name Extension

ICANN held a public meeting in Cairo earlier this month.  One of the main topics, as the video shows, discussed was the release of the new gTLDs.  The discussions centered around the release of the Applicant Guidebook, which is a publication for entities considering applying for a new generic top-level domain name.  Several discussions and meetings centered upon the new generic top-level domain names, the process for applying, and other information that can be found at ICANN’s new webpage dedicated to new gTLD’s here.

Trademark owners interested in acquiring a new gTLD should review the Applicant Guidebook, provide comments, and determine whether or not it is something they would like to pursue.  All trademark owners should be aware of the process and understand that their trademarks must be protected as new gTLDs, and the domain names that utilize those new gTLDs, are released.  Objection opportunities exist before a gTLD is approved.  In fact, the Guidebook states:

NAF Panel Finds Cybersquatting against Navigation Catalyst Systems - Orders Transfer of 41 Domains

Our domain name dispute and cybersquatting lawyers were able to obtain 41 domains registered by Navigation Catalyst Systems which were clearly cybersquatting on the famous weatherunderground.com and wunderground.com weather websites.  Weather Underground is one of the most popular weather tools in the world with an Alexa traffic rank of 570.

This is merely one of many proceedings that Navigation Catalyst has been involved in recently involving allegations of trademark cybersquatting.  You can read the decision below.

What If the Registrar Refuses to Transfer the Domain Name to Your Control after a Successful Transfer Order is issued by a UDRP Panelist?

It does not happen very often but there are instances where a trademark holder successfully brings and complaint under the Uniform Dispute Resolution Policy (UDRP)-achieving a panel finding of bad faith cybersquatting- and yet still has trouble securing their domain.  After a transfer order is issued, the registrar typically has ten day to work with the trademark holder to transfer the subject domain to the trademark holder’s control.  If the registrar being used by the cybersquatting in the first instance fails to transfer the domain, the next step is to work with ICANN who can enforce the registrar’s contractual obligations to fully comply with the provisions of the UDRP.  ICANN recently issued a draft advisory regarding registrar best practices to protect registrants upon initiation of the Uniform Domain Name Dispute Resolution Policy complaint at its contractual compliance web page found here. 

New ICANN Generic Top Level Domain Names Will Cost $185,000

Domain Name Wire is reporting that the new generic top-level domain names announced by ICANN this summer, allowing registrants to choose their own domain name suffix such as .nyc, will cost registrants approximately $185,000.  ICANN has spent almost $13 million for this new project, and Domain Name Wire reports that a large portion of that $185,000 estimate ($26,000 in fees) will go towards recouping those costs.  $100,000 of the application fee will cover the application process, and the remaining $60,000 has been added in through risk calculations by an insurance firm. 

Verizon v Navigation Catalyst Cybersquatting Lawsuit Settled: NCS Continues to Cybersquat Trademark Protected Domains

Despite the cybersquatting lawsuit brought by Verizon, Navigation Catalyst continues to target and register trademark protected domains and famous brands, as noted below in a recent panel decision against it under the UDRP wherein it was found to have engaged in bad faith cybersquatting on 41 domains of another famous brand.  Is it time Navigation Catalysts automated registration software, which clearly targets high traffic and likely trademark protected brands, be enjoined for the good of the domainer community?

Before getting to this important question, we are apparently the first to report that Navigation Catalyst has settled the lawsuit brought against it by Verizon, as well as its counterclaims against Verizon arising out of cross-allegations of Cybersquatting under the Lanham Act and Anti-Cybersquatting Protection Act (ACPA).  The Court had previously ruled in favor of Verizon on its Motion for a Preliminary Injunction in a strongly worded opinion questioning Navigation Catalysts alleged trademark scrubbing methods and specifically finding a likelihood that Verizon would prevail in establishing bad faith registration and use by Navigation Catalyst.  The terms of the settlement of "all claims" are simple;  Navigation Catalyst agreed not to register or assist in the registration of any of Verizon's trademark protected brands.   The stipulated order of settlement required nothing of Verizon  concerning the counterclaims of cybersquatting filed against it by Navigation Catalyst for Verizon's DNS wildcarding practices which clearly infringed on 21 of Navigation Catalyst's registered trademarks.  However, these cybersquatting and trademark infringement counter-claims diminished Verizon's 'victim status' and likely provided the leverage needed by Navigation Catalyst to resolve this matter without paying millions in damages for 'bad faith' statutory damages and attorney fees as provided under the ACPA.

But did Navigation Catalyst get off easy?  Are they the institutional 'mass cybersquatter' that so many recent domainers have indicated are giving the industry a black eye?  Traverse Legal's domain dispute attorneys  recently won a Uniform Dispute Resolution Policy (UDRP) cybersquatting arbitration at the National Arbitration Forum which raises serious questions about Navigation Catalyst's alleged 'scrubbing' policies. This cybersquatting matter involving 41 trademark protected domains registered by Navigation Catalyst as noted in this panel decision.  A large number of these registrations were original registrations and must have targeted the subject trademarks, seriously undermining navigation Catalysts "whoops" defense to the bad faith cybersquatting allegations.  Moreover, many were held for long periods, well beyond the 'tasting period' where Navigation Catalyst alleged in Court that it purged its automated registrations for trademark protected domain names. Unlike the Verizon lawsuit where only  7% of the trademarked domains were held beyond the AGP, all 41 of the above noted domains were held beyond the AGP.

When Your Web Developer or Host Holds Your Domain Name Hostage

Our domain name dispute lawyers are contacted regularly by companies who have a falling out with their web developer and thereafter realize that the web developer has registered the domain name listing the web developer as registrant.  When the domain name is trademarked protected, this presents a number of issues for both the web developer and the trademark holder. 

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

Domain Name Wire has great post and commentary concerning the problems presented when companies allow the web developer or host to control the domain registration.

Is Google Profiting From Typosquatting? Harvard Business Professor Sues Google for Mass Trademark Infringement

A common concern among trademark holders has finally hit the mainstream press this week.  Wired reports that Harvard University Business School professor Ben Edelman, one of the giants of the academic study of Internet architecture, has released a report stating that Google profits extensively from its use of pay-per-click ads on parked and typosquatted domain names. 

Trademark Owners Must Pursue Cybersquatters or Potentially Lose Their Trademark Rights

In a case recently decided in the United States District Court for the Southern District of Florida, Miami Division, a court again lent credibility to the argument that a trademark owner’s failure to timely protect its trademark rights can result in a waiver of those rights altogether.  In Southern Grouts & Mortars, Inc. vs. 3M Company , Plaintiff Southern Grouts & Mortars sued Defendant 3M under the Lanham Act and the Anticybersquatting Consumer Protection Act over its “DIAMOND BRITE” registered trademark.  3M registered an allegedly infringing domain name www.diamondbrite.com which was the primary driver for the trademark infringement lawsuit.

Cyberlaw Update: Google sued for allowing typo-squatting

Of course Google profits from millions of typo-squatting websites from Google's Adsense advertising program. But are they liable for trademark infringement or contributory trademark infringement? The  Lawyers in the Vulcan Golf, LLC v. Google Inc. class action lawsuit alleging the Google Adsense for Domains (AFD) program is assisting in violating trademarks are about to find out. A hearing on is scheduled for as early as next month in which Plaintiffs' attorneys will ask an Illinois federal judge to allow the case against Google to proceed.

Pizza Hut Fails to Secure Domain Names as Part of Its Rebranding Effort

Pizza Hut decided to rebrand as “Pasta Hut” in the United Kingdom.  Unfortunately, the marketing geniuses behind the move failed to register the most obvious domain names related to the new brand, including pastahut.com, pastahut.net or pastahut.info.  Pizza Hut did register pastahut.co.uk and pasta-hut.co.uk.  A spokesperson for Pizza Hut offered the feeble response (no doubt trying to cover their collective butts on this major oversight) with the following quote:

But a Pasta Hut spokeswoman said the company had no interest in any of the web addresses that had already been bought. "We own Pastahut.co.uk and Pasta-hut.co.uk. There is no reason why we would want any of the others," she said.

Companies that fail to protect their on-line brands and trademarks will pay a heavy price later.  They will be either forced to purchase domains at an exorbitant price or go without all of the traffic which will no doubt be diverted to their competitors. 

Cybersquatting and Domain Name Dispute Attorneys: Recent Cybersquatting and Domain Name Issues across the World Wide Web

Traverse Legal’s lawyers constantly monitor the latest information on the World Wide Web concerning cybersquatting and domain name issues.  Here is this week’s cybersquatting and domain name dispute round-up:

iTunes 'cybersquatting' row threatens Nominet authority
Silicon.com - UK
By Jo Best The authority of the UK's domain name registrar has been called into question after the owner of the domain name iTunes.co.uk investigated what ...

What's a domain name worth?
Financial Post - Toronto,Ontario,Canada
"[True cybersquatting is] if you take a name that is confusingly close to the name of a business to mislead or confuse," said Byron Holland, president of ...

New Owners of DNHour.com Plan to Continue and Develop This Pligg Site
WebWire (press release) - Atlanta,GA,USA
As a domain name dispute, cybersquatting and trademark lawyer that had visited the DNHour.com site many times previous to this purchase, Mr. Schaefer did ...

Cybersquatting .ph (Philippines) Domain Names Continues to Rise

Cybersquatting cases in RP rising | ABS-CBN News Online Beta

The rise in Internet usage in the Philippines has also led to a growth in cybersquatting cases or the unauthorized registration and use of a domain name of a popular brand or trademark belonging to someone else.

Emil Avanceña, sales and marketing director of DotPh, said the rising number of local domain name speculators or domainers is leading to more cybersquatting cases in the country. DotPH is the official domain registry of the Philippines, which sells the .ph country code domain.

"Some people will buy trademarks while others will buy a generic domain and develop it. We are seeing more of that. Because of the growth of Internet usage, more people are realizing that there’s a lot of value to advertising on the Internet. There’s more opportunity to make money or generate revenue from the Internet. The pie is getting bigger so each segment of the pie is getting bigger," Avanceña told abs-cbnNEWS.com.

Cybersquatting, Domain Name Disputes and Trademarks: The Basics Explained

thedomainess.com » Blog Archive » Cybersquatting And Your Domain Name

When it comes to domain names, don’t think that you only need to worry about the ones that you registered. This is because with the phenomenon of cybersquatting, domain names that are similar to your company’s trademark could be registered to unscrupulous webmasters, intending to use them in bad faith. What happens is once the cybersquatter has gotten sales or Adsense clicks from their domain name, they will try to sell it to the original entity holding the trademark. When things get to this point, the price is significantly higher, sometimes even thousands of dollars. This is despite the fact that the individual or organization buying the domain name originally had the rights to it in the first place.

So, how does a company protect themselves from cybersquatting? Well, first they need to be aware of whether or not domain names related to their trademark are being registered and used in bad faith. The best way to do this is to sign up for Google Alerts. This is a service that allows individuals or organizations to track any websites, comments, articles, etc. that are being made about their website or brand.

If they receive an alert that shows a domain name that is similar to their trademark, they could be dealing with a potential cybersquatter. The keyword of course is ‘potential.’ The person may not have any intention on selling the domain name back, though they are still using it in an illegal manner.

Technorati Tags: domain name disputes, cybersquatting, trademarks

Cybersquatting on Politician Names: Sarah Palin Is the Latest Victim of Squatting

We have previously blogged about the phenomena of cybersquatting on the personal names of famous people, including politicians. Political Candidate Cybersquatting: Hillary Clinton's Name Most Squatted

Republican Vice Presidential Candidate Sarah Palin is relatively new to the scene.  We thought we’d take a look and see how long it took before her fame was reflected in the number of cybersquatters trying to cash in on her new political status.  Here is a domain typo report provided by Domain Tools.

Changing WHOIS Privacy Protection In Domain Name Dispute Can Be Considered Registration In Bad Faith

An interesting domain dispute has recently come down from WIPO involving a new interpretation of WHOIS privacy protection services and their relation to the “registration in bad faith” UDRP element.  The case, BMEzine.com, LLC v. Gregory Wicks, concerned the domain name bme.com.  This decision has interesting and widespread ramifications for domainers who arbitrarily change their WHOIS information.

Brandjackers increasingly abuse top-ranked pharmaceutical brands via cybersquatting and typosquatting

MarkMonitor Reports Continuing Rise in Online Abuse of Top Drug Brands

SAN FRANCISCO--(BUSINESS WIRE)--MarkMonitor®, the global leader in enterprise brand protection, today released the Summer 2008 Brandjacking Index™, reporting that brandjackers increasingly abuse top-ranked pharmaceutical brands, endangering consumers via a supply chain compromised by the sale of questionable prescription drugs through dubious online pharmacies and exchange sites. The report also found that cybersquatting of leading brands has reached an all-time high and that phishers are targeting an increased number of diverse organizations for the first time.

“Our year-over-year trend data shows a grave situation: The number of people looking to save money by buying pharmaceuticals over the Web is growing rapidly while scammers are more aggressively exploiting loose controls over online sales of drugs,” said Irfan Salim, president and chief executive officer of MarkMonitor. “As consumers increasingly turn to the Internet to buy medications, brandholders must ensure these customers are not faced with the potentially life-threatening risk of buying fake or sub-standard medications.”

Technorati Tags: brand, branding, cybersquatting, typosquatting

Cybersquatting the Obama-Biden Ticket: Domain investors still don't udnerstand the UDRP and ACPA

CNN Political Ticker: All politics, all the time - Blogs from CNN.com

The Obama campaign has succeeded partly through astute, unprecedented use of the Internet. But some of the most obvious Web site domain names for the Obama-Biden ticket might not actually belong to the campaign anytime soon — if ever.

After hearing about Obama's selection for his number-two slot, anyone who tried to surf to obamabiden.org was re-directed to an eBay page selling that domain name for a starting bid of $100,000.

As of 6:30 p.m. ET, there were no bids listed.

The same seller lists 15 similar domain names up for sale, including obama-biden.com, obama-biden.org, and obamabiden-08.com.

Technorati Tags: obama, biden, cybersquatting

In Domain Name Disputes, Priority of Registration Will Often Trump Registered Trademark Rights

It isn’t often that a UDRP panel finds that a complainant who owns a registered trademark does not satisfy the first prong of the UDRP’s abusive registration test, namely, that the domain name is “identical or confusingly similar” to the complainant’s registered trademark.  Typically, UDRP panels will find that a trademark registration is prima facie evidence of confusing similarity.  But a recent panel has held that a complainant that registered its trademark after the respondent registered its domain name does not have the right to claim that the domain name is confusingly similar to its trademark.  Priority, it seems, is everything.

Celebrity Cybersquatting: Why Don't Famous People Protect Their Domain Names?

Celebrity cybersquatting is becoming increasingly important.  Traverse Legal's cybersquatting attorneys work with celebrities and their agencies to provide global online name and brand protection.  If you are a celebrity, or agent working on behalf of a celebrity, who is trying to protect a celebrity name in cyberspace, feel free to contact one of our domain dispute attorneys for a free evaluation or call 866.936.7447 (international toll free).

Cybersquatter offering threesome with Scarlett Johansson! | Latest News

The seemingly fake website isn”t so much of a surprise as the domain that it sits on – scarlettjohansson.com.

While the website has an offer that’’s hard to believe, it’’s even more incredible that the actress could so easily fall prey to a cybersquatter.

For over a decade, Hollywood stars have been the target of cybersquatters – people who buy famous-sounding web domains in hope of benefiting from related publicity.

Web domains including madonna.com, juliaroberts.com and piercebrosnan.com have all appeared in cybersquatting cases before the web’’s governing UN body the World Intellectual Property Organisation (WIPO). (ANI)

Technorati Tags: Scarlett Johansson, domain name, cybersquatting

Domain Name Dispute Decision: Craigslist.fr UDRP Transfer Order From WIPO

Craiglist.fr WIPO Decision

The WIPO UDRP decision regarding craiglist.fr does not hold many surprises.

What is semi-interesting is that the decision gives an overview of craiglist.org, which has been in operation since 1997.

Needless to say the panelist decided in favour of the trademark holder and ordered the transfer of craiglist.fr

Technorati Tags: udrp, wipo, cybersquatting

Law Firm Loses UDRP Domain Dispute Decision Over Use of Drug TRACLEER

K&L Gates : Newsstand : K&L Gates represents pharmaceutical company in precedent-setting WIPO domain name victory

On September 10, 2007, a three-member panel of the World Intellectual Property Organization (“WIPO”) found in favor of ... Pharmaceuticals, Ltd (“Actelion”), that the use of its trademarked drug name TRACLEER by a law firm for the purpose of soliciting clients for litigation was improper under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). The Panel’s decision, a clear departure from previous precedent, represents a positive outcome for trademark owners, especially those in the pharmaceutical industry, whose trademark rights are being improperly used by lawyers and law firms to attract litigation clients.

Before Actelion, the seminal WIPO case involving use of a pharmaceutical company’s trademarked drug name by a law firm was decided in favor of the products liability lawyer. See Pfizer, Inc. v. Van Robichaux , WIPO Case No. D2003-0399 (July 16, 2003).

Read the WIPO decision here.

Protecting Your Trademark is Protecting Your Goodwill

Do I Really Need to Worry About my Trademark? Ask eBoost Consulting « The Legal Satyricon

eBoost Media and eBoost Consulting are both search engine optimization companies that operate out of California. Same field, same business, very similar names, even similar addresses. Now that one company is at the center of a viral internet story about the worst customer service ever, the other company is distraught and doing damage control.

Despite all the negative attention, “eBoost Consulting is guilty of nothing more than being careless about defending its trademark.” (source)

Technorati Tags: cybersquatting, trademark, good will

Defensive registration of .me domains to prevent cybersquatting

BUY ME DOMAINS: Why should you get your dot me domain?

But why should you get your own .me domain if you're very happy with your .com domain already? We'll because of the simple fact that somebody else just might register it and possibly sell it to you at a higher price! It's nothing new. Cybersquatting is everywhere and rampant. Cybersquatters are people registering different extensions of other people's domains in the hope that one day they will be approached by somebody, sell it and make a profit out of it.

Defensive registration of domain names to protect your trademark rights and defend against cybersquatting is an important part of any company's on-line brand protection program.

Technorati Tags: cybersquatting, .me, domain names, trademark

Google Sued For Offering Low Quality Pay Per Click Ads On Domain Parking Pages

Information Week reports that Google is being sued for fraud, unjust enrichment, and business code violations for its use of “low-quality” ads on parked domain names and error pages.  Google’s AdSense for Domains places advertisements on empty domain names, and its error pages program replaces 404 and other errors with pay per click ads.  According to the suit, Hal K. Levitte, a California attorney, used Google’s AdSense for Domains to park several unused domain names.  These domain names received a total of 202,528 impressions over the course of three months, but only 668 of those impressions resulted in clicks and 0 resulted in conversions.

Traverse Legal Cybersquatting News Alerts for Monday, July 21, 2008

A decision on a preliminary injunction motion by Finance Express in the Finance Express v. Nowcom Corp. case has come down in favor of Finance Express.  The court found that Finance Express would have been irreparably harmed if Nowcom was allowed to continue to register domain names containing Finance Express’s trademarks, to use those domains to redirect to a site housing misleading press releases to convince customers to use Nowcom, to “keyword stuff” by using Finance Express’s marks in its metatags, and to use “keying” to trigger banner ads when users search for Finance Express’s products.  Finance Express v. Nowcom Corp., 2008 WL 2477430 (C.D. Cal. 2008).

Domain Dispute Arbitration Panel Finds Authorize.net Waived Rights to Complain of Trademark Infringment After Over 10 Years of Use

Our friends over at domainnamewire.com recently picked up on an interesting case out of the World Intellectual Property Organization (WIPO).  This case involves the waiver doctrine and the effect of permission on a domain name dispute.  Authorize.net, credit card payment service provider and owner of the AUTHORIZE.NET trademark, filed a proceeding with WIPO against Cardservice High Sierra for the use of the AUTHORIZE.NET trademark in their registered domain name at authorized.net.

Traverse Legal Cybersquatting News Alerts for Monday, July 14, 2008

A new version of typosquatting has recently come into play with ICANN’s allowance of Internationalized Domain Names (IDNs).  This new type of typosquatting consists of the registration of non-standard characters to replace letters in the URL, such as pàypal.com. 

Registering a Competitor's Trademark in a Domain Name is Never a Good Idea and Can Result in ACPA Damages and Injunction

It is never wise to register the trademark of a competitor in a domain name.  As Silver Ring found out, registering a competitor’s trademark in a domain name can subject you to the possibility of damages and a permanent injunction under the Anticybersquatting Consumer Protection Act (ACPA).

If ICANN’s Domains Can Be Hacked, Then Your Domain Names Can Be Hacked

We get calls from companies all of the time indicating that they have lost control of their domain names.  Some companies have their registrant login information or email accounts hacked, providing the domain name thief direct access to the registrant account at the registrar level.  Some companies make critical mistakes in protecting their domain names, allowing for serious holes in their security and domain protections systems.  Other times, registrars simply screw up.

As is being reported at the domain name news, ICANN lost control of its valuable domain names as a result of a attack on the domain registrar register.com:  The full story is being reported in the New York Times in the article "ICANN Blames June Site Hijack on Registrar."   

Cybersquatting, Domain Theft and Domain Name Dispute Quicklinks

City in legal fight over golf course name
San Diego Union Tribune - United States
...It accuses Shah of cybersquatting by laying claim to names that incorporate The Crossings at Carlsbad name, but for which he has no bona fide ...

Available Now - 2008 Strategies for Trademark Disputes: Top ...
MarketWatch - USA
... for trademark and trade dress infringement, trademark counterfeiting, trademark dilution, cybersquatting, copyright infringement and false advertising. ...

Clowns Sue Seattle Rep
TheStranger.com - Seattle,WA,USA
... and violations of anti-cybersquatting law, rights of publicity and privacy, fraud, conversion, prima facie tort, and unjust enrichment. ...

10th Circuit Holds Noncommercial Use of Trademark for Parody or Criticism Not Trademark Infringement or Cybersquatting

Cybersquatting is a highly fact-based area of the law.  Sometimes the use of a trademark within a domain name, even where the trademark is fully appropriated, can be held to be a fair use.  This is especially true where a website is used to parody or criticize another.  A recent 10th Circuit decision, Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research (FAIR), held that using a trademark within a domain name for the purposes of parody and criticism, even where the site links to another commercial site, is unlikely to cause confusion under the Lanham Act.  The court also held that this use was not cybersquatting under the Anticybersquatting Consumer Protection Act (ACPA) because the defendant did not have a bad faith intent to profit in registering and using the similar domain names.

The Tension Between Trademark Holders and Domainers over the Definition of Cybersquatting

The tension between trademark holders and domainers continues to evolve and, by some accounts, intensify. Some domainers take issue with the definition of cybersquatting applied under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA).  These domainers believe that generic or descriptive words used in a domain name should be exempt from trademark rights.  Trademark holders remain concerned that their trademarks and service marks are constantly under attack in cyberspace and, further, see parked pages with PPC advertising links as little more than spam.  However, both legitimate domainers and trademark right advocates generally agree that cybersquatting and typosquatting are bad.  Both groups advocate aggressive enforcement against blatant cybersquatting.  Where they disagree is on the definition of what constitutes "cybersquatting."  You can read more about the three views of trademark cybersquatting on Traverse Legal's domain monetization blog.