Cybersquatting & Domain Dispute Lawyer Attorney Law Firm

Trademark Attorneys Specializing In Cybersquatting, Domain Theft, Domain Disputes & On-Line Brand Protection

Our internet law attorneys specialize in cybersquatting and trademark matters including cybersaquatting, domain disputes, domain name theft, WIPO / NAF arbitration, Uniform Domain Name Dispute (UDRP), Anti-Cybersquatting Act Litigation in Federal Courts across the United States. Don't settle for attorneys who think they can 'figure it out.'  Our trademark and domain dispute attorneys have handled some of the highest profile cybersquatting cases for some of the largest companies in the world.     

 

 Managing Partner Enrico Schaefer: "Traverse Legal's internet law attorneys know trademark and cybersquatting law and pride themselves on advanced litigation techniques which are both cost-effective and budget oriented.  From Stolen domain names to mass cybersquatting, we understand the internet, back-end DNS, ISP and hosting issues at a technical level which allows us to focus on results. There are very few firms that can match our ability to get back-end registry level data in order to put your best leverage in play. We understand the Internet and the technology which drives it.  Because we are a boutique litigation law firm, we know how to strategically and efficiently accomplish our client's goals. "

If you have a trademark, domain name dispute, domain theft or cybersquatting issue, you may contact one of our trademark and domain dispute attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Political Cybersquatting: Politician Domain Names Getting Big Money But Why?

With the boom of the internet and the use of social media and websites to boost popularity, domain names for celebrities and politicians are some of the more popular domains trying to be acquired.  However, hijacked or acquired domains that are intended to be sold for an inflated price or to be used to post negative and slanderous messages about the famous individual on that website is considered as cybersquatting and is unlawful.  The Anti-Cybersquatting Consumer Protection Act (ACPA) and the Lantham Act were enacted to prohibit cybersquatters from registering a domain name containing a trademark with no intention of creating a legitimate website but to instead sell such domain name to the trademark owner or a third-party for a significant profit.

 

Even with such laws in place to protect personal and proper names of famous people like politicians, why are many of these domains still selling at such high prices?  One reason may be that the time and money it takes to go through a legal proceeding to acquire the domain name is more substantial than what one desire to endure.  So, in order to save on time, some may believe that it would be easier to just pay the high price to quickly obtain such domain name, especially if a political election is on the horizon.   But each case is unique and depending on the details and the parties involved, a political cybersquatting domain name issue could possibly be resolved in a reasonable amount of time if represented by an knowledgeable domain name attorney.  Even if one believes that paying the high asking price for a political domain name is a better alternative than dealing with a court proceeding, the politician or famous person should really take the time to make a strategic plan with an experienced domain name lawyer before paying any amount.   

 

The Lantham Act has protected trademarks in the United States for a very long time.  Our domain name attorneys often receive questions from clients about personal name protection in cyberspace. The Wikipedia definition of 'personal name' states, "A personal name is the proper name identifying an individual person. It is nearly universal for a human person to have a name." And yes, personal names are specifically protected from cybersquatting under the Anti-Cybersquatting Consumer Protection Act (ACPA).   If you are experiencing a similar issue or have further questions about cybersquatting, contact one of our domain name attorneys.

The Cost of Protecting Your Brand and Domains

The new generic top level domains (gTLDs) are opening up countless opportunities for new domains and websites.  However, these domains may come at a higher price.  As the new gTLDs become available, registrars are paying thousands to millions of dollars for the highly desired domain name extensions and may need to charge a more costly registration price for these top level domains.  

 

For example, Vox Populi Registry, Ltd. is planning to offer .SUCKS at the suggested retail price of $2,499 per year for each Sunrise premium domain name registration, which are for those trademarks registered in the Trademark Clearinghouse.  So, if a company wants to protect their brand, they may have to consider paying this price of $2,499 in order to register .sucks in their own name to prevent the domain from being registered and inappropriately used by others.   However, there are less expensive options that will be available after the Sunrise Period is over and if the domain is still available.  Some of these options include a domain block for $199 per year or registering it as a regular domain name for the price of $249 per year.   Unfortunately for many brand owners, the release of new gTLD extensions like .SUCKS may require them to reassess their portfolios to determine whether defensive registrations are a necessary investment that cannot be avoided, and instead of taking the chance to wait until after the Sunrise Period for other low cost options.

 

Regardless, it is imperative that companies take the time to re-evaluate their brand strategies to ensure that their valuable intellectual property rights are properly protected with these new gTLDs now becoming available.  If you are unsure of what steps to take or need assistance in further protecting your brands, consult with one of our experienced domain name attorneys.

 

 

What To Do When You Do Not Own the Domain Name That Corresponds To Your Trademark?

Any domain name law attorney is regularly faced with the question from prospective and existing clients alike: “How can I get the domain name that matches my trademark?”  Some assume that they are automatically entitled to it, while others recognize that domain name law requires several things before one can alleged or pursue a cybersquatting matter.  Since domain names rights are on a first come, first serve basis, only in the event that the trademark owner can establish trademark rights and a bad faith intent to register, use or traffic in the domain name that they wish to own would a cybersquatting cause of action apply.  Therefore, an experienced domain name attorney will be able to answer the question only after analyzing both your trademark rights and the domain name registration and use in order to determine whether or not the requisite bad faith intent exists.

Cybersquatting Personal Names

Welcome to Cybersquatting Law Radio where domain names, cybersquatting, and trademark domain name issues are always the hottest topic of discussion.  Whether you are a trademark owner who believes they are a victim of cybersquatting or a domain owner wrongly accused of trademark infringement, you will find all the tips you need to protect your rights right here.

Cybersquatting Personal Names Interview Audio

Matt Plessner:  Hi and welcome back to Cybersquatting Law Radio.  I’m Matt Plessner.  Today, we are going to be talking about what it means to cybersquat a personal name and, you know, how such a thing can be prevented as well.  Of course to help us with, in joining us today again, is cybersquatting attorney, Brian Hall of the Traverse Legal office in Traverse City, Michigan.  Brian, thanks for being here.

Brian Hall:  Thanks a lot.

Matt Plessner:  Now Brian, for those new listeners out there, can you start off by telling us what it means to cybersquat?

The Next Generation of the Internet

Welcome to Domain Name Law Radio. Domain names are valuable assets.  Domain disputes, domain theft, cybersquatting, and domain monetization are important issues.  Our domain lawyers have answers to your domain name questions.  

Matt: Hello and welcome back to Domain Law Radio.  This is Matt Plessner and do you ever wonder what is in store for the future generation of the internet?  Jennifer Wolfe, Managing Director of Wolfe Domain and Co-author of the book, “Domain Names Rewired” has some good ideas on this.  We are, of course, pleased to have her with us today via Skype.  Jennifer, thanks a lot for being with us today.

Jennifer:  Thanks for having me.  It is a pleasure.  

The Next Generation Of The Internet

Matt: Well, it is a pleasure to have you here, like I said.  Now Jennifer could you start off by just kind of telling us a little bit about what you do and what your website is about? 

Jennifer:  Sure.  So what I do is I consult with companies, largely right now very big brands, but also some smaller and emerging companies in understanding how the internet is about to change and how they should be developing their strategy. 

How Do I Obtain A Domain Name That Matches My Trademark?

If you are looking to obtain a domain name that matches your trademark, you have to ask yourself several questions. The first is whether or not the person who has the domain name is intentionally violating your trademark. If the person owned the domain name before you established trademark rights, or achieved the level of fame where they might know you exist, then you are going to have to purchase the domain name from them. If the person registered the domain name in order to divert traffic because of your trademark, then they may be a cybersquatter.

For domain names that are registered in  violation of either the Uniform Domain Name Resolution Policy (UDRP) or the Anti-Cybersquatting Consumer Protection Act (ACPA), you have a couple different options. You can file a UDRP arbitration or to seek a transfer of the domain name to your control. Under the ACPA, you could potentially file a lawsuit or send a threat letter arguing the person violated the statute and should transfer the domain name to you. Under the ACPA, you could potentially obtain attorney's fees and damages for trademark infringement. Under the UDRP you are limited to a transfer of the domain name to your control.

You should not be sending out any threat letters alledging trademark violations unless you have thouroughly analyzed the history of the domain name using the WhoIs Database. Even then, it requires a level of sophistication to determine if the person has held the domain name for a long time and thus predates your trademark rights. You should contact a cybersquatting or domain name lawyer in order to better understand your options and rights. You don't want to send a threat letter alledging trademark violation if you are ultimately going to have to purchase the domain at fair market value. Sometimes you have to decided whether or not you are going to lead with cookies and ice cream rather than blunt force trauma. 

Domain Registration of A Baby Name

With the recent birth of Prince George, the future King of England, domain name registration and cybersquatting considerations have been thrust into the media. The domain name, GeorgeAlexanderLouis.com was registered by a Portuguese domain name broker according to reports online. The domain name registrant was able to register the domain name prior to Prince William and Kate Middleton, who named their son George Alexander Louis. As a result, many are questioning whether or not this is a legal domain name reigstration or unlawful cybersquatting.

This isn't the first time that an individual opportunistically registered a domain name that corresponds to a baby name. It was oftentimes done to the parents of celebrities or other high profile individuals, as could recently be seen with the registration of Blue Ivy Carter following the birth of a child to Jay Z and Beyonce. The common theme in all of these situations is that the celebrity, other individual, or company did not think of buying the domain name prior to making an official announcement. Once the domain is registered, they are left to wonder 'What now?'

For the avoidance of doubt, domain name registrations are on a first come first served basis. However, cybersquatting laws, including the Anti-Cybersquatting Consumer Protection Act or ACPA, make it unlawful for a domain name registrant to register the domain name incorporating the trademark of another so long as that individual does so with a bad faith intent to profit off of that trademark. When dealing with personal names, there are also provisions under the ACPA that pertain to the unlawful registratiion of personal names, with a requirement being that there is an offer to sell the domain name incorporating the personal name to the actual individual. Obviously, registering the domain name corresponding to a baby name may carry with it liability under the ACPA's various provisions. However, should the domain name be registered and used for a criticism site, fan site, or some other fair use, the domain name registration and use may not amount to cybersquatting.

Regardless, the best course of action is to be the first to register the domain name prior to any announcement. Parents should be considering registering the domain name corresponding to their baby name prior to their baby's birth. It will most likely be difficult to register domain name corresponding to only the first name, but they can considering registering the first and middle name, the first and middle and last name, or the first and last name. Registering a domain name corresponding to the baby name will not only prevent issues relating to cybersquatting, but it will also be a valuable asset for any individual baby as he or she grows up and wants to use that domain name for personal and/or professional purposes.

It remains to be scene how the matter involving GeorgeAlexanderLouis.com will be resolved. Will Prince William and Kate Middleton contact the domain name registrant and attempt to purchase it? Will a lawsuit be filed? Will a UDRP (Uniform Domain-Name Dispute-Resolution Policy) be filed? Or, will this simply be a story that domain name attorneys and domain name lawyers use to further educate their clients and prospective clients about the importance of domain name registration and protection of both personal name and trademarks? 

Wondering About the New gTLD Legal Right Objection?

The legal rights objections filed by a number of applicants for new gTLD's are starting to come in. WIPO has posted a number of decisions concerning legal rights objections on new gTLD's over the past two weeks. More decisions should be coming down soon.
    If your looking to keep abreast of the new LRO decisions by WIPO you can find them at Legal Rights Objections filed with the WIPO Arbitration and Mediation Center

Reverse Domain Hijacking Decisions

As the years pass and the number of (UDRP) Uniform Domain Name Dispute Resolution Policy arbitrations occur, more and more decisions are addressing reverse domain hijacking. Put simply, reverse domain hijacking occurs when a complainant uses the policy in bad faith to attempt to deprive a registered domain name holder of a domain name. It is typically the respondent that makes a request of the panel for a finding of reverse domain hijacking; although it is possible the panel may make such a finding on its own. Regardless, a panel must be satisfied that the complainant knew of the respondent's unassailable right or legitimate interest in the domain name where the clear lack of bad faith registration in use and nevertheless brought the complaint in bad faith; or that the complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interest; or that the complainant knew it had no rights in the trademark or service mark in which is relied and nevertheless brought the complaint in bad faith. While there are an ever growing number of decisions by both the national arbitration forum and world intellectual property organization, there are still some uncertainty as relates to reverse domain hijacking.

While a finding of reverse domain hijacking does not necessarily allow the respondent to recover the resources it had to invest in defending the UDRP complaint, it is a finding that simply does not look good for a complainant. While the UDRP may not allow for recovery of attorney's fees or other filing fees for a respondent when a finding of reverse domain hijacking is made, other ccTLD (country-code top-level domain) dispute resolution providers may indeed allow for such recovery. Regardless, respondents are well served to make the request for reverse domain hijacking when they believe it exists. Doing so forces the complainant to explain its case further and also allows the panel the opportunity to understand whether or not this is truly a matter that should be subject to a UDRP .

Ultimately, a domain name attorney with experience in the UDRP can advise a complainant as to the strength or weakness of its case. Similarly, a domain name attorney can advise a respondent who is subject of a UDRP complaint of the likelihood of a successful defense and or finding of reverse domain hijacking. Reverse domain hijacking should not be an afterthought in today's domain name disputes.

UDRP Involving Web Developer Dispute

The National Arbitration Forum recently issued a decision on June 24th, 2013 that involved what we have seen to be a fairly regular factual dispute. In particular, the complainant had retained a web developer to create its website. When the complainant failed to pay the web developer, the web developer changed the website available at the domain name. In particular, the web developer made the webpage resolve to content that stated that the website was paused for non-payment of an overdue invoice, and that invoice amount was for $1500. Interestingly, the complainant had transferred the domain name to the web developer as part of the project. As is not uncommon, the complainant simply did not know that it should not retain registration of the domain name for reasons like this. The UDRP (Uniform Domain-Name Dispute-Resolution Policy) panelist determined that the respondent's request for the domain name and use to display that there was an overdue payment, amounted to a bad faith registration and bad faith use, as is required under the UDRP. Therefore, the UDRP panelists decided in favor of the complainant and ordered transfer of the domain name, namely AlaskaHealthFair.org. 

This decision may come as a surprise to some, in light of the fact that it is a fact pattern that is not necessarily limited to traditional cybersquatting. Instead, it involves contractual issues, namely the breach of contract to pay a web developer. However, this UDRP decision may be used as precedent in the future to resolve domain name disputes that involve factual scenarios similar to this. Nevertheless, a domain name attorney will be in the best position to analyze particular facts and determine whether or not the UDRP is the best course of action.

Overdrive, Inc. Found Liable For Cybersquatting: Plaintiff Awarded $74,500.00 Plus Reasonable Attorney Fees

Traverse Legal cybersquatting law attorneys obtained judgment on behalf of their client against full-service digital distributor of eBooks, audiobooks, music and video company Overdrive, Inc. for cyber-piracy (aka cybersquatting) and breach of contract.  On January 10, 2013, Judgment was entered in the United States District Court for the Western District of Michigan, Southern Division against Defendant Overdrive, Inc.for the amount of $74,500.00 plus costs and reasonable attorney fees.  The $74,500.00 (out of a maximum award of $100,000) award against Overdrive, Inc. was for statutory damages under the ACPA.  The total award, with attorney fees, could exceed $200,000.  Further, Overdrive, Inc., was ordered to transfer the domain name “forwardreviews.com” (a typographical variation of Plaintiff’s trademark protected domain forewordreviews.com) to Plaintiff.  This cyber-squatting and cyber-piracy judgment against Overdrive, Inc., is one of the largest jury awards for trademark infringement on a domain name under the Anti-Cybersquatting Consumer Protection Act (ACPA) 15 USC § 1125(d)(m).

Case Name:  ForeWord Magazine, Inc. v Overdrive, Inc., United States District Court, Western District of Michigan, Southern Division, No. 1:10-cv-01144. The case is on appeal as of March 2013.

Representing OverDrive, Inc.:  Lester S. Potash – Attorney.

Company Representatives For Overdrive, Inc. Steven Potash (CEO) and Mike Vantusko (CFO).

OverDrive is funded by Insight Venture Partners, a private-equity firm that focuses on technology companies.  Overdrive’s key products and services:   OverDrive Media Console, OverDrive Read, OverDrive Media Station, Content Reserve.

BACKGROUND of ACPA

Online extortion comes in many forms and occurs all too often on the internet.  Whether it is people extorting companies by registering and using company names, typographical variations of company names or misdirecting Internet traffic to competing websites, cyber-squatting or cyber-extortion remains a serious problem.  As noted by Spencer Abraham, one of the sponsors of the ACPA:

On-line extortion in any form is unacceptable and outrageous. Whether it's people extorting companies by registering company names, misdirecting Internet users to inappropriate sites, or otherwise attempting to damage a trademark that a business has spent decades building into a recognizable brand, anyone engaging in cyber-squatting activity should be held accountable for their actions.

 As noted in Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002), "Cybersquatting is the Internet version of an unlawful land grab. Cybersquatters register well-known brand names as Internet domain names in order to force the rightful owners of the marks to come forward and pay for the right to engage in electronic commerce under their own name."

UPDATE June 20, 2013: "The matter has been resolved by agreement of the parties and the appeal dismissed. The matter is now closed.

BACKGROUND OF LAWSUIT AGAINST DEFENDANT OVERDRIVE, INC.

UDRP Complaints on Hotel Names Continue to Rise

As an attorney who represents a number of hotel and resort chains around the world on UDRP and cybersquatting matters, I see hotel names as one of the primary areas of cybersquatting on the internet.  Because of the number of vendors who feed off of the hotel, resort and hospitality industry, this particular industry segment is ripe for cybersquatting.  Everyone from travel agents to typo-squatters like to divert traffic from hotel and resort domain names to thier own websites often with pay-per-click advertising links as the only content (parking pages).

Can I Recover a Lost Domain Name for My Business?

Can I recover a lost domain name for my business? As a domain name lawyer, I hear this kind of question all the time from small businesses to large companies, from Internet startup companies and venture backed capital companies all the way on up to companies that are doing hundreds of millions of dollars in revenue per year. Companies and businesses, startups lose their domain names all the time, and it's not something that you want to happen to you or your company or business.

Reverse Domain Name Hijacking

When you file a WIPO or NAF UDRP proceeding, you need to make sure you know what you're doing as the trademark holder or complainant.  Just because you want a domain which someone won't sell to you, does not mean you can file a Uniform Domain-Name Dispute-Resolution Policy (UDRP) arbitration to seek a forceful transfer of that domain name to your possession from the registrar.

What Happens after a UDRP?

A UDRP is an arbitration under the Uniform Dispute Resolution Process and Policy that allows someone to file a complaint with an arbitration forum, usually WIPO or NAF, and get a decision usually within 30 to 45 days. As part of that UDRP, they must establish three things. One, ownership of a trademark that the domain name is confusingly similar to; two, that the registrant and user of the domain name doesn't have any legitimate rights or interest to that domain name; and three, that the registrant of the domain name actually registered it and used it in bad faith.