Cybersquatting & Domain Dispute Lawyer Attorney Law Firm - The Anticybersquatting Consumer Protection Act

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The new .co domain extension is here. What implications, if any, are there to the ACPA if one company or person takes a .co of a well-established brand or is confusingly similar to another established company's business?

Cybersquatting laws need to be tougher and less expensive.

Is ICANN in charge of the Cybersquatting Act or is that only US law? I know ICANN cybersquatting provisions include the UDRP.

The Cybersquatting Act helps protect trademarks for sure but he practical aspect is that it cost money to protect your trade marks. I wish Cybersquatting Act could also go through UDRP style arbitration.

is a good writing and will be here always congratulations

There are, for all practical purposes, three venues appropriate for in rem proceedings under the ACPA (1) the location of the registrar, (2) Herndon, VA - the location of the .com registry, (3) Mountain View, CA - the offices of Verisign, the .com registry.

Kevin J. Heller wrote a very nice primer on how do defeat bogus cybersquatting claims, The Young Cybersquatter's Handbook.. If you are intersted in this issue, you should check it out here.

Cybersquatting, Typo-squatting, Competing Legitimate Use, Reverse Domain-Name Hijacking, Trademark Rights are all discussed.

Kevin concludes:
As e-commerce continues to proliferate, trademark holders will require greater protection. However, the extension of ever-greater protection must be carefully balanced with the rights of individual citizens in securing space on the web. Also, as the law changes and further clamps down on established practices, the ingenuity of the cybersquatter and/or entrepreneur will evolve to circumvent these laws. The new wave of cybersquatters is already registering generic and multi-lingual domain names to resell at substantial sums.

Rather than waiting for lawmakers to attempt to keep pace, trademark holders should rely on their attorneys to give them prospective advice when forming a corporation, so as to minimize conflict. For example, an attorney working with a start-up corporation should advise management that before selecting a name and incorporating, they will need to perform a trademark search not only in the PTO registry, but also on the Internet, in each of the gTLD's, with multilingual characters (if operating in foreign markets), along with a host of other requirements. This will be necessary for avoiding disputes with and/or making substantial payments to co-existing legitimate rights domain name holders. Ultimately, it will be up to the vigilant trademark lawyer to institute preventative care, in order to stem the tide of infringement and dilution spawned by the ever more clever cybersquatter.

Only Anticybersquatting Act, Not Trademark-Dilution Claim, Provides for Transfer of Offending Domain Names

Cybersquatting involves, for example, a cybersquatter registering an Internet domain name that includes or is very similar to a trademark that is owned by a third party. The cybersquatter is usually an individual that has no legitimate right to use the third party’s trademark. Rather, the intent of the cybersquatter is typically to sell the domain name to, or use it to disparage, the legitimate owner. In the recent case of Porsche Cars North America, Inc. v. Porsche.Net, __ F.3d __, 2002 Westlaw 1941442 (4th Cir, Aug. 23, 2002), it was made clear that only a claim under the Anticybersquatting Act, not a trademark-dilution claim, enables the legitimate owner of a trademark to seek and obtain ownership of domain names from a cybersquatter.

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See this site for some great case links

Chatam International, Inc. v. Bodum, Inc.
157 F. Supp. 2d 549, Civ. Act. No. 00-1793 (E.D.Pa. August 7, 2001)
Plaintiff, holder of a federally registered trademark in the mark "Chambord" for sale of a liqueur and assorted food products, brought this action under the Anticybersquatting Consumer Protection Act, and for trademark infringement and dilution, against defendant, who holds a federally registered trademark in the mark "Chambord" for the sale of coffee makers. The action was triggered by defendant's registration of the domain name "," at which it planned to, but had not yet offered for sale its coffee makers. The court dismissed the action, holding, inter alia, that (a) the ACPA claim failed because defendant had not acted in bad faith in continuing to utilize its federally registered mark for the sale of coffee makers; (b) the trademark infringement claim failed because the initial interest confusion doctrine (a consumer looking for company's As site finds company B's instead) was inapplicable to situations where the parties in question did not offer competing goods; and (c) the dilution act claim failed because plaintiff's mark was not famous at the time defendant commenced its use of the mark.

E. and J. Gallo Winery v. Spider Webs Ltd., et al.
Civ. Act. No. H-00-450, 129 F. Supp.2d 1033 (S.D. Tex., January 24, 2001) aff'd., 286 F.3d 270 (5th Cir., 2002)
Court enjoined defendants from continuing to utilize the domain name, and directed them to transfer the name to plaintiff E. and J. Gallo Winery ("Gallo"), which holds a trademark in the mark "Ernest and Julio Gallo." The court further awarded Gallo statutory damages under the Anticybersquatting Consumer Protection Act ("ACPA") in the amount of $25,000 as a result, inter alia, of defendants' registration of the domain name at issue, and their use of that domain name to operate a web site that commented on this lawsuit, and contained articles critical of alcohol consumption. Defendants had also registered some 2000 other domain names, a number of which contained the names of famous companies, cities and buildings.

Garden of Life, Inc. v. Barry Letzer, et al.
Case No. CV 04-2619AHM (MANx) (C.D. Ca., May, 2004)
Finding plaintiff likely to prevail on claims of trademark infringement and cybersquatting, Court issues preliminary injunction directing defendants, purported competitors operating a business under the same name as plaintiff, to transfer to plaintiff 74 domain names which contain plaintiff's trademarks or variations thereof, during the pendency of this suit. The Court further directed plaintiff to remove the existing content on the sites found at those domains and replace it with an "under construction" notification, and pay all registration fees for these domains which may become due. The Court reached this result notwithstanding the fact that defendants had registered the main domain at issue,, before plaintiff commenced its use of that mark in commerce. On this motion, the Court rejected defendants' claim that they had been using the mark "gardenoflife" in commerce continuously since 1974. The Court found instead that defendants' use of the mark did not commence until after plaintiff's. As a result, and because defendants registered many of the domains at issue after plaintiff had entered into negotiations with defendants for the purchase of the name, which domains contained variations of plaintiffs marks unrelated to defendants' business, the court found plaintiff likely to prevail on claims of trademark infringement and cyberquatting.

Lamparello v. Falwell
Civil Action No. 03-1503-A (U.S. Dist. Court, Eastern District of Va., August 5, 2004)
Court holds plaintiff infringed defendants' trademarks, and violated the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of his operation of a 'typo' web site at the domain at which he criticized the Rev. Falwell's views on homosexuality, and expressed his own contrary views on that subject. At one time, the site informed interested visitors of a book plaintiff considered relevant to this discussion, and provided a link to at which they could purchase it. The Court reached this result notwithstanding the fact that plaintiff's site featured a prominent disclaimer, advising users that it was not defendants' official site.

Mattel, Inc. v. Adventure Apparel
(S.D.N.Y. September 19, 2001)
Court grants Mattel, the holder of numerous trademarks in and including the word "Barbie," summary judgment, holding that defendant violated the Anticybersquatting Consumer Protection Act ("ACPA") by registering the domain names "" and "," causing those who accessed such domains to view a commercial web site selling women's apparel operated by the defendant, and effectuating a single $10 sale of merchandise to an investigator hired by plaintiff who accessed one of the domains in question. The court ordered defendant to relinquish the domain names at issue, and to pay Mattel $2000 in damages. The court declined to award Mattel its attorneys' fees.

Mayflower Transit, LLC v. Dr. Brett Prince
Civ. Act. No. 00-5354 (D.N.J., March 30, 2004)
Court holds that defendant's use of plaintiff's service mark in the domain names of noncommercial web sites critical of plaintiff does not constitute a violation of the Anticybersquatting Consumer Protection Act ("ACPA") because this was a "bona fide noncommercial" use of the mark which defendant had reasonable grounds to believe was lawful. In reaching this result, the Court determined that defendant was motivated not by an intent to use his critical web site to extract money from plaintiff, but instead by a desire to express his dissatisfaction with plaintiff's alleged conduct. The Court accordingly granted defendant's motion for partial summary judgment, and dismissed plaintiff's ACPA claim. Left for another day were libel and trade libel claims arising out of the sites' content, as well as a Federal Dilution Act claim under 15 U.S.C. § 1125(c) arising out of the defendant's use of plaintiff's service mark.

People for the Ethical Treatment of Animals v. Doughney
No. 00-1918 (4th Cir., August 23, 2001)
The Fourth Circuit, affirming the decision of the district court below, held that defendant was guilty of service mark infringement and unfair competition, and had violated the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of his creation and operation of a web site at the domain, which contained plaintiff's federally registered service mark "peta." In reaching this conclusion, the Fourth Circuit rejected defendant's defense that his site, titled "People Eating Tasty Animals," was a parody of plaintiff's "People for the Ethical Treatment of Animals" organization because the domain name containing plaintiff's mark did not appear simultaneously with that aspect of the web site containing the parody of plaintiff's organization.

The Toronto-Dominion Bank v. Boris Karpachev
188 F. Supp. 2d 110 (D. Mass., Mar. 6, 2002)
Court holds that defendant violated the Anticybersquatting Consumer Protection Act by registering sixteen domain names containing misspellings of plaintiff’s trademark, at which domains defendant operated web sites that voiced his complaints about plaintiff’s business practices. Defendant did not offer any goods or services for sale at these web sites, and there is no mention in the record of any attempts by defendant to try and sell the domain names to the plaintiff.

Virtual Works, Inc. v. Volkswagen of America, Inc., et al.
238 F.3d 262 (4th Cir., January 22, 2001)
The Fourth Circuit, affirming the determination of the district court below, held that plaintiff violated the Anticybersquatting Consumer Protection Act ("ACPA") by registering and offering to sell to defendant the domain name, which contains defendant Volkswagen's famous "vw" mark.

See this site for some great case links

On June 15, 2001, the United States Court of Appeals for the 3rd Circuit, in the case of Shields v. Zuccarini, upheld a federal district court award of statutory damages of $50,000 plus attorneys' fees of $39,109 in the court's first case involving the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (the "Act"). This case is good news for trade mark owners, but very bad news for typosquatters and cybersquatters. It provides a lot of ammunition for owners of famous trade marks who desire to obtain infringing domain names plus obtain money damages and attorneys' fees from cybersquatters and typosquatters.
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