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.
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