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.

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?. 

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:

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

ICANN Tries to Put An End to Domain Tasting and Opens the Door to New gTLDs

It is an exciting time for the development of the Internet, and it has gone almost unnoticed.  A number of developments in the domain name world have occurred today.  ICANN has paved the way to outlaw domain tasting at its Paris meeting this afternoon.  In April 2007, a supermajority of the GNSO (Generic Names Supporting Organization) council voted to discourage domain purchase grace periods in which refunds are given for the purchase of a domain within a set number of days, typically five.  In May 2007, ICANN's at-large advisory committee again asked the GNSO to look at the domain tasting issue, and they came up with five problem areas to address in regards to domain tasting.  Today, ICANN enacted a proposal that will prohibit those registrars that offer the grace periods from offering a refund for domain names that exceed 10% of the registrar's net registrations for the month or, alternatively, 50 domain names, whichever is greater. 

Additionally, the ICANN board voted to approve a massive expansion to the available domain names.  This new expansion, which must still be ratified by the ICANN board (expected in 2009), will allow applicants to the gTLD process to select their own suffixes.  This recommendation paves the way to allow trademark holders to select more marketable suffixes, e.g. diet.pepsi or pumps.reebok, and it allows cities to apply for suffixes (e.g. .newyork & .chicago).  It will be interesting to see how this affects trademark holders, and how it will affect the value of the current premium TLDs such as .com. 

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.

A Specific Proposal for Stronger Laws to Protect Against Mass Bad Faith Cybersquatters

Christopher T. Varas:  "Sealing the cracks: a proposal to update the anti-cybersquatting regime to combat advertising-based cybersquatting." Journal of Intellectual Property Law & Practice Advance Access originally published online on February 20, 2008.

In this article, Mr. Varas takes the position that the UDRP and ACPA are no longer effective to protect mark owners and proposes stronger laws.  Specifically, Mr. Varas proposes that a finding of cybersquatting under the UDRP result in prima facia case under the ACPA, thus making money damages more likely. You need to be a subscriber to read the full article.   Here are some snippets.

Technorati Tags: cybersquatting, brand owners, pay-per-click, PPC

NAF Domain Dispute Decisions under the Cybersquatting Provisions of the UDRP for March 28, 2008

The following Uniform Dispute Resolution Policy (UDRP) decisions were entered by the National Arbitration Forum (NAF). There are 30 panel decisions, and of those decisions, 21 domains were transferred after findings of cybersquatting, 3 UDRP complaints were denied, 6 UDRP complaints were withdrawn.

WIPO Domain Dispute Decisions under the Cybersquatting Provisions of the UDRP for March 28, 2008

The following Uniform Dispute Resolution Policy (UDRP) decisions were entered by the World Intellectual Property Organization (WIPO). There are 38 panel decisions, and of those decisions, 34 domains were transferred after findings of cybersquatting, 4 UDRP complaints were denied.

Transfer Order For Traverse Legal's Clients under the UDRP

Traverse Legal attorney and cybersquatting specialist Brian Hall successfully represented our client American Wealth Alliance, Inc., which owns and operates breedersclub.net, a networking and information web site for pet breeders against Respondent Katarzyna Bieniek in a domain arbitration brought under the UDRP.  Traverse Legal's attorneys successfully achieved transfer of the domain by filing a UDRP cybersquatting complaint before the National Arbitration Forum.

The decision is significant because (a) our client did not have  trademark registration with the US Trademark Office and (b) our attorneys had to overcome Respondent's expected argument that 'breeders club" was a generic or simply descriptive term.

The client enjoyed a tremendous return on their investment, taking control of a extremely valuable domain with established traffic, solidifying their common trademark rights based on secondary meaning and securing the customers and advertisers who were being diverted by the cybersquatter in question.

If you have a domain name dispute, trademark infringement or cyber-squatting issue, you need the help of domain name dispute experts. Traverse Legal will provide you an attorney who specializes in cybersquatting arbitrations under the UDRP and anti-cybersquatting lawsuits under the ACPA.   Read the full decision below ....