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. 

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.

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

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

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.

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.

Protecting Your Trademark In Light of ICANN's New Generic Top-Level Domain Names

Domain names have become an important part of our commercial lives.  They act as designators of products and services and serve as shortcuts to reduce consumer search costs.  That is why trademark owners must be vigilant in protecting their trademark rights on the Internet.  On June 24, ICANN gathered to discuss adding new generic top-level domain names, or gTLDs, to the spectrum of available domain name suffixes.  When ICANN adds gTLDs, you can be sure that cybersquatters and typosquatters are watching because it presents them with a new opportunity to register the trademark of another to profit off of the goodwill and Internet traffic associated with the mark.  Domain name disputes inevitably follow the addition of TLDs, so it is important to hire an attorney that is proactive in monitoring the use of your trademarks on the Internet.

Fighting Cybersquatters Will Potentially Enhance, Extend and Strengthen Your Trademark Rights

Some companies take laxed view of cybersquatted domains, including typosquatters who are in clear violation of the UDRP and ACPA.  To often, a trademark holder analyzes the matter purely in terms of traffic.  They assume, wrongly in some instances, that a typosquatted domain isn’t generating much traffic anyway.  They may not understand direct navigation or fail to employ the analytic tools available in order to measure traffic being diverted from their trademark protected websites.

L'Eggo My Eggo.com! Kellogg Learns a Domain Dispute Lesson: Hire An Internet Attorney Who Specializes in Domain Disputes

Thanks to Domain Name Wire for this post which illustrates once again that trademark lawyers often find themselves over their head under the UDRP when they try to arbitrate domain disputes. Clearly, counsel did not have the experience to obtain the background information necessary to understand that the domain eggo.com was a poor (if not impossible) candidate for UDRP transfer.  The Kellogg North America Company v. N.A. c/o Gregor NAF decision was correctly decided under the Uniform Domain Name Dispute Resolution Policy. Kellogg wasted its money on this effort to protect the Eggo trademark.

Domain Name Wire » News » Leggo My Eggo! Kellogg Loses Domain Dispute - The Domain Industry's News Source

Kellogg North America Company, which sells frozen waffles under the “Eggo” brand, has lost a domain dispute for the domain Eggo.com.  In its dispute before National Arbitration Forum, Kellogg asserted that the domain name was for sale since it was registered in 2001, probably referring to an Archive.org image of the site that showed the domain for sale at DomainDeluxe. But Kellogg didn’t check its facts and the historical ownership records, as it turns out the current owner bought the domain from DomainDeluxe in 2002 for $1,400.  According to Archive.org, the domain has been used for a real consulting company called eggo since at least the early part of 2003, showing there is no confusion with the Eggo waffle brand and a bona fide use of the domain.  The National Arbitration Panel panelist found that: (1) the disputed domain name is identical to the EGGO mark; (2) Complainant has rights in the mark EGGO; (3) Respondent has rights or legitimate interests in the disputed domain name; and (4) the domain name was not registered and is not being used in bad faith.

The decision is interesting because eggo.com is NOT a generic domain name. However, Respondent contented that he was unaware of the eggo brand and Kellogg attorneys apparently offered no evidence of sales of eggo waffles in Spain, where Respondent was located. More importantly, Respondent was using eggo.com for a legitimate purpose, that is, as a consulting firm which just happened to share the same name as our morning waffles. This could easily have been a 'reverse domain hijacking' decision under the facts presented. The full decision is found below.

Political Candidate Cybersquatting: Hillary Clinton's Name Most Squatted

Hillary Clinton the Most “Cybersquatted” Name This Election ~ The National Arbitration Forum Blog

The most eagerly followed U.S. election race in decades has triggered an avalanche of 'cybersquatter' activity, according to a cybersquatting report on Forbes.com. More than 1,900 domain names related to the presidential candidates have been registered.  The report by NetNames, an ICANN accredited domain name registrar, indicates that Hillary Clinton, followed by Barack Obama and then John McCain, is the most popular candidate online. More than 1,000 domain names related to Clinton’s name have been registered.

According to NetNames Study, a significant proportion of hijacked domain names lead to online 'click farms' - websites that feature Google-style pay-per-click adverts.  This is classic cybersquatting and typosquatting. Presidential and other political candidates have always been a favorite target of people looking to cybersquat famous names because of the web traffic they attract and the huge political campaign marketing budgets which push potential voters to official candidate web sites. Because internet users often mistype the candidates name into the browser address bar, many people navigate to these cybersquatting sites by accident. In some instances, negative messages or competing politicians are include din the ads which display on the cybersquatting site. Political candidate cybersquatting poses risks to candidates because of the potential for diverted traffic and competing political messages. As noted previously, personal names, including those of political candidates because they are inherently famous, are protected by both the UDRP and ACPA. 

A November 2006 New York Times article discussed political candidate domain name disputes, cybersquatting on personal names.  The article highlighted Senator Hillary Rodham Clinton’s domain name dispute under the UDRP which she filed the National Arbitration Forum in which a panelist ordered the disputed domain name HillaryClinton.com to be transferred to Clinton.  (see NAF cybersquatting decision below)

Technorati Tags: personal names, cyber-squatting, political candidates, Hillary Clinton, Barack Obama, John McCain