Cybersquatting & Domain Dispute Attorneys / Lawyers

Cybersquatting, Trademark and Domain Name Dispute Attorneys: Protecting Domain Assets.

Attorneys specializing in cybersquatting, trademark and domain monetization matters.

Managing Partner Enrico Schaefer: "Traverse Legal's attorneys represents domainers like you in portfolio protection matters, trademark infringement threat letters and litigation.    We know cybersquatting and trademark law and pride ourselves on advanced litigation techniques which are both cost-effective and budget oriented.  We also handle a large volume of complex litigation under both the Lanham Act, UDRP and the Anti-Cybersquatting Protection Act.  Because we are a boutique litigation law firm, we know how to strategically and efficiently accomplish our client's goals."

If you are dealing with a domain name dispute based on trademark rights or wish us to analyze your domain portfolio for trademark issues, you may contact one of our domain attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

 

Domain name disputes are becoming more common all the time. Some cybersquatting and trademark infringement allegations against domain owners are legitimate.  Some are not. If you have received a cybersquatting threat letter demanding that you turn over your domain name to a third party or been named as a Respondent in an ACPA or UDRP/ICANN proceeding, you need the help of an experienced domain dispute attorney.  High value domain names and domain name porfolios need to be protected.  We can help protect your valuable domain assets.

Cybersquatting and trademarks: What you need to know.

Cybersquatting occurs when a domain name is identical or confusingly similar to a third party owned trademark or personal name and - this is critical -  is registered with a bad faith intent to profit from the trademark owner. 

Is a UDRP or URS Proceeding an option?

Having your attorney send a cybersquatting threat letter to a domain name WHOIS privacy or proxy email address can often fall on deaf ears.   With GDPR, you can't see who the registrant email belongs to, or who registered the domain name.  A URS or UDRP proceeding (See this link to understand the difference) is often the most cost-effective way to force a transfer of a domain name to the trademark  owner.

What about an ACPA lawsuit?

If a UDRP won't work for you situation, you will need to bring a lawsuit under the ACPA. 

A bad faith intent under the ACPA statute is determined by various bad faith factors such as, but not limited to:

(I) the trademark or other intellectual property rights of the person, if any, in the domain name;

(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;

(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;

(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and

(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section.

15 U.S.C.A. § 1125 (West)

In Rem Cases Under the ACPA: Do you have to prove bad faith intent to profit?

Bad faith does not need to be alleged or proved in an in rem ACPA case under 15 U.S.C. § 1125(d)(2) in the Fourth Circuit. See Jack in the Box, Inc. v. Jackinthebox.org, 143 F. Supp. 2d 590, 592 (E.D. Va. 2001). Jack in the Box was the first in its jurisdiction to construe whether the ACPA statutory language required a “bad faith” analysis under section 1125(d)(2), the in rem prong. On the bad faith issue the court held:

[t]here is no need for the Court to address the ‘bad faith’ factors in the in personam provision of the statute because this action is one in rem . . . . The plain terms of the statute clearly state that the ‘bad faith’ analysis applies only to 15 U.S.C. § 1125(d)(1), the in personam prong, not 15 U.S.C. § 1125(d)(2), the in rem prong.”

Interview with Christine Willett, VP of gTLD Operations - YouTube Video

 

Brad White:  First of all, Christine Willett, thank you very much for taking the time to talk with us. 

Christine Willett: Absolutely!  My pleasure.

Brad White:  Most obvious question first.  What's your best guess as to when we will see the first new gTLDs online?

New gTLD Domain Name Suspended by URS

With the offering of new generic top-level domains (gTLD), consumers, domainers and companies can find, purchase and create domain sites that better represent who they are to the right of the dot.  However, this can also create problems for those with already established trademarks and domain names.  

For example, it was recently decided by the Uniform Rapid Suspension System (URS) that a gTLD domain name be suspended because the Complainant met, by clear and convincing evidence, all three elements of the URS requirements:

gTLD Domains at Top Auction Prices

There was a massive expansion of new general top-level domain names (gTLDs) at the end of 2013.  Having a more descriptive word to the right of the dot will give consumers, domainers and business owners the opportunity to expand their online presence with a domain name that will better represent who they are or more closely fit to what type of business they have.    However, the domain auction companies that purchased these gTLDs did so with a high price tag.  For example, the gTLD extension of .garden and .yoga  sold together for the price tag of almost $6 million dollars.  

So what does this mean for those looking to purchase at the next release of gTLDs? It could mean that domain auction companies or any other businesses looking to purchase gTLD extensions as they are rolled-out is going to have to dig deeper than just in their pocket change purse.  Consumers are learning the importance of a good domain name to have in order to get very high online recognition, so domain auction houses and big businesses definitely know the value of applying for and paying big bucks for the best gTLDs.  

Your Domain and the TLD Expansion

With the addition of new top level domains, such as .discount and .cheap, being offered, it is highly recommended to brand owners that they take additional registration steps with ICANN to protect their trademarked domains.  ICANN has recently formed the Trademark Clearinghouse (TMCH), which is a global, centralized database of domain names.  The TMCH has been created so that brand owners can submit their trademark information to validate their rights to a particular mark and help protect such trademark holders during the expansion. 

The TMCH provides what is known as the “Sunrise” service period to those that have registered with the TMCH, allowing trademark holders to have priority access to requested domain names associated with their trademarks before the general public is given access to the same.

Another service the TMCH provides is the Trademark Claims Service.  This requires Registries to check new domain registrations against the TMCH database.  Any registrations that match a registered domain with the TMCH, the Registry must notify the party attempting to register the domain name, and then the trademark holder if such party goes forward with that registration.  This allows trademark holders to take immediate action towards any new domain registrations if it is infringing on their protected rights. 

However, registration with the TMCH comes with a price.  Base registration fees start at $150 per year for registration; $435 for a three-year registration; and $725 for a 5 year registration.  Therefore, if a trademark owner has more than one or several marks to register, that owner should carefully plan which trademarks are to be registered and which ones should not be registered with the TMCH.

Looking for additional information that better explains the Trademark Clearinghouse and its services, or get assistance in determining which trademarks to register with the TMCH, contact one of our experienced attorneys. 

Do Celebrities Have Rights in Their Matching Domain Names?

    Celebrity domain names are almost always in the news. That's because people tend to register domain names of famous people, politicians and celebrities in order to make money off of someone else's fame. Celebrity cybersquatting has been around since domain names first became available to register.

gTLD Oppositions For Legal Rights Objections (LRO)

Having just completed a number of responses to objections filed to gTLD applications, I have a number of observations. Many lawyers are dealing with the LRO process. Some of the objections that were filed were legitimate objections based on legitimate trademark issues. Many of the gTLD objectons in the LRO process were actually designed only as leverage against the other applicants. They were attempted figurative or design trademark registrations on what are otherwise dictionary words. Those objections have not been dealt with kindly by the expert panelists at WIPO.

As a gTLD registry lawyer, I would say this. You need to be very careful about what kind of oppositions under the LRO process you file if you are an applicant for a gTLD in the future. Do not try and game the system by leveraging bogus trademark rights against other applicants. Neither ICANN nor WIPO will look on those oppositions kindly. These are expert trademark registration and trademark infringement lawyers who are acting as panelists. They know the difference between a frivilous and legitimate LRO claim.

CAN A TOP LEVEL DOMAIN (GTLD) BE TRADEMARKED?

With all the new GTLDs being rolled out by the Internet Corporation for Assigned Names and Numbers (ICANN), the question of whether a GTLD can be trademarked has become the big issue. The answer is relatively straightforward. A GTLD cannot in and of itself be trademarked. But if the GTLD is in fact an indicator of source and origin (i.e., .google, .deloit, .aarp, .censure, .ford, .amazon, etc.) then the GTLD can be trademark protected.

Currently, there are a number of legal rights and objections that have been filed on a variety of GTLD applications claiming that the applied-for GTLD infringes an existing right of a trademark owner. Many of the objections, however, deal with clearly generic and/or descriptive dictionary words. Those GTLD legal right objections will, no doubt, fail because they seek protection of the GTLD itself which is purely descriptive of some vertical (i.e., .golf, .analytics, .apartments, .architect, .art, etc.).  While a variety of trademarks have been filed by a variety of applicants for otherwise descriptive/generic GTLDs, those applicants have typically had to disclaim exclusive rights in the word or have filed design class word marks knowing they can't achieve trademark rights in the word itself.

Below is an example of a refusal by the USPTO examining attorney analyzing the issue and providing the analysis which virtually precludes dictionary words from achieving exclusive trademark rights as a GTLD registry:

SECTION 2(E)(1) – MERE DESCRIPTIVENESS REFUSAL

Registration is refused because the applied-for mark merely describes the field of applicant’s services.
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

Top-level domains or TLDs often describe the subject matter or user of the domain space. In re the Dot communs. Network LLC, 2011 TTAB LEXIS 366 (Trademark Trial & App. Bd. Nov. 22, 2011). When the applied-for top-level domain engenders the commercial impression of a top-level domain and the top-level domain operator registers domain names, consumers would anticipate that the top-level domain identifies the registration of domains in the field identified in the mark. Id. Moreover, the TTAB has held that top-level domains are descriptive for other services where the applied-for mark directly conveys to relevant consumers that the services are related to the field specified in the mark. Id. Specifically, consumers would expect ancillary goods and services to be rendered by the operator of top-level domain registry in the same field as the domain name registration services. Id.

Here, applicant’s mark, combines the term DOT, meaning “the character that separates the different parts of the domain name” with [dictionary word], meaning “services that enables real estate brokers to establish contractual offers of compensation (among brokers), facilitates cooperation with other broker participants, accumulates and disseminates information to enable appraisals, and is a facility for the orderly correlation and dissemination of listing information to better serve broker's clients, customers and the public” for services featuring and related to top-level domain names in the field of real estate listings. See Attachment 1 – Microsoft Internet & Networking Dictionary definition of DOT;  see also Attachment 2 – Dictionary.com definition of [dictionary word] and Wikipedia listing for multiple listing service.

Purchasers would perceive the applied for mark as a TLD because it is structured in the manner of a top-level domain. That is, purchasers are accustomed to the combination of a decimal point followed immediately by a term or phrase as a top-level domain. See, i.e., Attachment 3 – examples of top level domains that would lead purchasers to the conclusion that the applied-for mark is a top level domain. When used in connection with top-level domain name registration consulting, purchasers will not understand the mark as denoting applicant as the source of the services, but as conveying salient  information about the services.

Ultimately, when purchasers encounter applicant’s services using the mark DOT[dictionary word], they will immediately understand the mark as an indication that applicant’s consultation services relate to the registration of top-level domains in the field of real estate and not an indication that applicant is the source of the services. Therefore, the mark is merely descriptive of the field of applicant’s services and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

Traverse Legal, PLC Successfully Defends UDRP Filed by Non-Profit: No Established Trademark Rights in Phrase "Organizing for Action"

Attorney Brian A. Hall has successfully defended a UDRP filed against its client concerning the domain names organizingforaction.com and organizingforaction.org.  The UDRP Decision to deny the claim matches another earlier, although recent, decision that reached the same result concerning the domain name organizingforaction.net.  While the two UDRPs were separate, involving separate Respondents, separate facts and allegations, and separate representation, the decisions to deny the Complainant's Complaint were both based upon Complainant's failure to establish trademark rights in the phrase "Organizing for Action."  Complainant is a non-profit organization associated with the Democratic Party and supported by President Obama.  Complainant currently operates from President Obama's primary website, barackobama.com, There has already been significant press concerning the background related to the Complainant and these domain name disputes.  See here, here, and here.