Cybersquatting & Domain Dispute Attorneys / Lawyers

UDRP: Lack of Use of a Domain is NOT Always a Defense

The mere holding of an infringing domain name without active use can constitute use in bad faith under the UDRP.  Despite this, all too often trademark owners watch as domains are registered that incorporate their trademark.  Unfortunately for the trademark owner, they think costly litigation under the ACPA is the only means of redress for what appears to be clear cybersquatting.  While the UDRP is cost effective and efficient, there is a general understanding (or more appropriately misunderstanding) that there must be a use of the domain name in order to file a UDRP complaint and win the UDRP.  In fact, the rules for the Uniform Domain Name Dispute Resolution Policy, states that the domain name must have been registered in bad faith and used in bad faith to satisfy the policy.  Registration in bad faith was, and continues to be perceived by some, as not enough.  That said, recent panels have held that a Respondent’s failure to make an active use of the web site, such as merely parking the web site with a web hosting company, is enough to satisfy bad faith registration and use under policy paragraph 4(a)(3).

Dell Lawsuit Exposes the Seedy Side of Domaining and Domain Monetization

Follow the Latest Developments In The Dell Typosquatting / ACPA Lawsuit Here.

At the heart of the Dell ACPA cybersquatting lawsuit is the concept of the now highly controversial Add Grace Period (AGP) implemented by ICANN, which is  the technological and policy foundation of domain tasting.  A Grace Period refers to a specified number of calendar days following a Registry operation in which a domain action may be reversed and a credit may be issued to a registrar. AGP is typically the five day period following the initial registration of a domain name. AGP appears as a contractual term in some, but not all gTLD registry agreements.

AGP was implemented for consumers to correct of typos and other errors by registrants. Once a domain name is deleted by the registry at this stage, it is immediately available for registration by any registrant through any registrar. When a domain name is registered through an ICANN accredited registrar, that registrar may cancel the domain name at any time during the first five calendar days of the registration and receive a full credit for the registration fee from the registry.

Few companies have publicly taken on the serious serious issues of cybersquatting and the policies of ICANN which create and support the practice of domain tasting, a commercial activity which has little if any legitimate justification in cyberspace. Few companies have the financial ability to take these matters to court and expose the seedy practices of cybersquatting, typosquatting and domain tasting. In many instances, the defendants are hard to locate or even identify, making the possibility of collecting damages remote.

In the Dell lawsuit, it is alleged that the defendants set up a network that cycled infringing domain names from one registrar to the next in order to hold onto the domains indefinitely without ever paying for them, all the while profiting from pay-per-click ads on the sites that often served visitors with ads for Dell's competitors.  These allegations suggest one of the most obvious examples of intentional bad faith cybersquatting. Unfortunately, this level of cyber and typosquatting is not only common, but rampant on the world wide web today.

These blatant squatters are also difficult to coral.  Because of private registration, it is often difficult to identify the registrant behind a particular domain registration. Even if the registrant is identified, the more sophisticated squatters use offshore companies to The complaint further charges that the registrars created and controlled a series of shell corporations in the Bahamas to act as the entities registering the domains, including Caribbean Online International, Domain Drop S.A., Domibot, Highlands International Investment, Keyword Marketing Inc., Maison Tropicale, Marketing Total S.A, Click Cons Ltd., Wan-Fu China Ltd. and Web Advertising Corp.

Free Cybersquatting Report

Traverse Legal offers a free Cybersquatting Report to anyone interested in determining whether or not their domain name is having traffic diverted, website visitors forwarded to competitor websites or are otherwise the victim of cybersquatting. 

Many companies go for months or years without realizing that their web traffic is being diverted to other locations as a result of cybersquatting activity. Contact us for a free Cybersquatting Report and find out who's stealing your website visitors.

Judicial Watch’s Proposed Cybersquatting Claim Against Larry Klayman

In a recent ruling by United State District Colleen Kollar-Kotelly, Defendant Judicial Watch, Inc. has been allowed to amend its counterclaims against Plaintiff Larry Klayman in what is shaping up to be a somewhat ironic judicial battle between the watchdog group Judicial Watch and its founder Larry Klayman who is no longer affiliated with the organization. The complaint and counterclaims are detailed and expansive.  You can read the complaint here.  Of interest to me is the recent effort of Defendant and Counter-Plaintiff Judicial Watch against Larry Klayman for cybersquatting.

Judicial Watch's proposed cybersquatting claim is brought under the Anti-Cybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d). Am. Count. P P 106-16. To state a cybersquatting claim under the ACPA, Judicial Watch must allege that (1) JUDICIAL WATCH is a distinctive or famous mark entitled to protection; (2) Klayman's www.savingjudicialwatch.org domain name is identical or confusingly similar to Judicial Watch's mark; and (3) that Klayman registered his domain name with the bad faith intent to profit from it. 15 U.S.C. § 1125(d)(1)(A); Shields v. Zuccarini, 254 F.3d 476, 482 (3d Cir. 2001). Klayman does not contest whether Judicial Watch's federally registered trademark, JUDICIAL WATCH, is distinctive or famous, and the Court therefore assumes as much arguendo.

Domain Tasting Gone Bad

According to ICANN, domain tasting is defined as “the monetization practice employed by registrants to use the ad grace period to register domain names in order to test their profitability.”  The ad grace period, or AGP, is the 5-day period following a registration during which the registrant is entitled to revoke the registration for a full refund.  During this period, registrants conduct a cost benefit analysis to see if the tested domain names return enough traffic to offset the registration fee paid to the registry over the course of the registration period.  In other words, for six dollars or so, a registrant can register numerous domain names, which may include trademarks of others, in order to see if they can acquire enough revenue to justify such a practice. 

However, the recent case Dell vs. Florida Registrars may be changing all of this.  Trademark holders are rooting for Dell, while cybersquatters are undoubtedly hoping to mount a defense against claims of cybersquatting, trademark infringement, counterfeiting, dilution, and unfair competition.  Although the result is yet to be determined, it is clear that trademark owners are no longer standing by as cybersquatters seek to capitalize off of their valuable trademark rights.  So, whether you are a trademark holder or an individual interested in registering domain names, it is important for you to understand the distinctions between being a domainer and being a cybersquatter.  You may be conducting a legitimate business in one sense or exposing yourself to significant liability in another. Contact us today if you wish for us to analyze your domain name, trademark, or cybersquatting issue.

Dell Files Cybersquatting Lawsuit against Domain Name Companies

In a lawsuit filed in Florida, Dell charges Juan Pablo Vazquez of Miami, Florida, several unknown individuals, and a handful of domain name companies with violating its trademarks on more than 1,100 domain names.

The lawsuit, unsealed two weeks ago, accuses the defendants of cybersquatting, trademark infringement and dilution, counterfeiting, deceptive trade practices, and unfair competition.

Dell alleges that the defendants registered domains that contain the name "dell," or something close to it, and used the infringing domains to host "'pay-per-click' Web sites that display or displayed advertising links to various commercial Web sites" and to offer goods or services identical or similar to Dell's sites.

The lawsuit also claims the defendants set their sites up to serve pop-up and pop-under ads, and thereby earned ad revenue off Dell's trademarked names.

Cybersquatting -- using, registering, or profiting in bad faith from a domain name that's identical or similar to an established trademark -- and typosquatting -- using, registering, or profiting in bad faith from a domain name that's a deliberately misspelled version of an established trademark -- isn't only a problem for Dell. many other companies are having their internet traffic diverted by typosquatting and other forms of cybersquatting...

Read more about the Dell cybersquatting article here:

- Dell claims that there is a network of shell businesses that profit from people who make typos while entering URLs

- Dell Fights Cybersquatters And Rogue Resellers In Court

-  Will Google AdSense be Impacted by the Dell Lawsuit?

The Global 100 Draw Attention To The Increasing Threat of Cybersquatting

[Updated on July 22, 2008]

• Alan C. Drewsen, Executive Director of the International Trademark Association.
• INTA Members Named Among Most Influential in Intellectual Property
• On the Web
• Cybersquatting:  The New Gateway Scam to Identity Theft?
• Blog Review Assignment:  ABC's Blog Blotter on Cybersquatting

 

The  lawyers of Traverse Legal are proud to sponsor this radio interview with Alan Drewsen from the International trademark Association (INTA), a global membership association dedicated to the support and advancement of trademarks and related intellectual property as elements of fair and effective national and international commerce. Mr. Drewsen provides insight and definition to the growing problem of cybersquatting, the Anti-Cybersquatting Consumer Protection Act (ACPA) and consumer protection in cyberspace. [Information on joining INTA].

Free Cybersquatting Report

Traverse Legal offers a free Cybersquatting Report to anyone interested in determining whether or not their domain name is having traffic diverted, website visitors forwarded to competitor websites or are otherwise the victim of cybersquatting. 

Many companies go for months or years without realizing that their web traffic is being diverted to other locations as a result of cybersquatting activity. Contact us for a free Cybersquatting Report and find out who's stealing your website visitors.

CADNA, Just a Start!!!

The Coalition Against Domain Name Abuse (CADNA), is a new group backed by some of the largest organizations in the world, such as Dell and Hilton. CADNA's goal is to make cybersquatting laws, including the Anti-Cybersquatting Act (ACPA), more stringent so as to deter, and ultimately prevent, cybersquatters from "stealing" millions of dollars per year from legitimate businesses. While a non-profit coalition like CADNA is a great start, especially in light of proposed policy changes to ICANN that would make it easier for cybersquatters to remain anonymous, domain name and trademark owners must still be cognizant of the ways to protect their current domains and expand into new valuable domains. Moreover, should you be victimized by a cybersquatter, you need a lawyer that can explain the most cost effective and timely method of reacquiring your intellectual property.

You can contact us today if you would like us to assist you in a comprehensive domain name portfolio protection plan. In addition, should WIPO or the NAF arbitration process be required, we can assist in filing a complaint, responding to a complaint, or simply navigating your way through the UDRP.

Protecting Your Domain Name: Control is the Key.

Traverse Legal's Enrico Schaefer featured on vTalkRadio.com.  Here he explains how to protect your domain name and trademarks from theft or cybersquatting on the internet.  ...

 

Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement, Copyright Infringement, Cybersquatting, On-Line Defamation, Non-Compete & Trade Secret Law and Complex litigation. If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.

JOHN: Welcome to VTalk Radio Tech Spotlight. Sponsored by Traverse Legal, PLC . Today we are talking about protecting your domain name with Enrico Schaefer, specialist in technology and domain law. Good Morning, Enrico.

ENRICO:  Good Morning, John.  Thanks for having me today.

JOHN:  I understand you have got some great tips to share with everybody about protecting their domain name?

ENRICO: Yeah I do, John. You know, people do not realize that their domains are always at risk. People register their domain name and they think, great, I own the domain. They put up a great website, they put up a merchant account, and before you know it, they're doing tens or  hundreds of thousands of dollars worth of business through that website, they wake up one morning and their domain is gone. Their website is gone and they call me because they are in crisis wanting to know what they can do. What we often find, John, is that these people who've lost their website did so through their own negligence.

JOHN:  What in the world could you do to lose your website after you've already registered it?