Cybersquatting & Domain Dispute Lawyer Attorney Law Firm

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).

How to Defend Against a Claim of Cybersquatting: Litigation Stories from the Jury Box

So, you've been accused of cybersquatting under the Anticybersquatting Consumer Protection Act. You've received a trademark infringement and cybersquatting threat letter from a trademark owner saying that you've engaged in bad faith cybersquatting. The trademark owner has a registered trademark dully filed with the United States Patent and Trademark Office and it's been registered since 2002.

Lawsuit Filed by Porn Industry against ICANN Over .XXX

Domain name disputes typically occur between trademark owners and domain name registrants over allegations of cybersquatting or between trademark owners and website developers, employees, partners over domain name theft and hijacking.  And this first of its kind litigation case, the pornography industry attorneys have filed a lawsuit directly against ICANN alleging monopolistic conduct, price gouging, anticompetitive behavior and unfair business practices for establishing the .XXX top-level domain name (“TLD”), which is supposed to be the new home of adult content.  Trademark owners are bemoaning the .XXX TLD because of the exorbitant price being charged in order to defensively register your trademarks on the XXX TLD in order to avoid pornographic sites engaged in trademark cybersquatting.  The whole thing smells like a money grab by ICANN.  If a trademark owner fails to register its trademark as a .XXX TLD, the risk of brand harm is real and significant. 

Domain owners are already cashing in on registering solid, generic .XXX domains, and then reselling them for tens or hundreds of thousands of dollars. 

The lawsuit filed in the United States District Court for the Central District of California is included in full below.  Note the antitrust (Sherman Act) violations alleged in addition to unfair competition. 

Manwin DP vs ICM

Facebook Files Cybersquatting Lawsuit Regarding 104 Typographical Variations of Facebook.com

Typosquatting is one of the most nefarious forms of cybersquatting.  Companies continue to struggle with the sheer volume of domain names registered by cybersquatters which incorporate all or part of their registered trademarks.  Facebook, which has not been particularly aggressive when it comes to protecting its online brand, just stepped it up a big notch. 

Facebook, Inc.  has sued 23 defendants plus John Does 1-119 for cybersquatting, contributory cybersquatting, trademark infringement, contributory trademark infringement, false designation of origin and contributory false designation, trademark dilution and contributory trademark dilution, breach of contract and tortuous interference with economic advantage.

The complaint can be found below.  Separately, we are posting Exhibit A which is the list of typo domain names which, by virtually any standard, clearly incorporate the Facebook trademark.

Domain Name Lawsuits | Reverse Domain Name Hijacking Leads to Penalty

Reverse domain name hijacking is typically a term used by domain name attorneys in threat letters and responses to threat letters.  Reverse domain hijacking refers to a an entity's attempts to secure a domain name by making false cybersquatting  claims.  Under the Uniform Dispute Resolution Policy (UDRP), panels have often found that overreaching trademark owners are guilty of reverse domain hijacking.  Other than a ruling in the UDRP decision, there is no monetary damages or penalty for such behavior.  The ACPA does not even expressly recognize reverse domain hijacking.  However, that did not stop a judge from rewarding over $100,000 in cybersquatting case as a penalty in finding reverse domain name hijacking.  The judgment, as posted by domainnamewire.com, was in favor of DigiMedia.com after GoForIt Entertainment attempted to acquire generic domain names based upon a theory that use of "goforit" as a third level domain name constituted cybersquatting.

Federal Judge Tells Habitual Cybersquatter Gillece To Stop Cybersquatting

Cybersquatting and Domain Name Dispute Update:  Judge Tells Gillece To Stop Cybersquatting - Pittsburgh-Area Plumber Must Stop Internet Redirection

Federal judge orders habitual cybersquatter, Gillece Services, to stop cybersquatting on its competitors.  Gillece Services is a plumbing, heating, cooling and electrical service company based in Pittsburgh.

Cybersquatting Cases | Ford Sues Ferrari for Cybersquatting F-150 Trademark

Ferrari sued for trademark infringement:

Detroit News:  Ford Motor Co. sues Ferrari in U.S. Federal Court for cybersquatting and trademark infringement for using its famous F-150 trademark.  Ford filed the lawsuit after Ferrari named its new Formula 1 racing car the “F-150,” and after creating the new website www.Ferrari150.com.

According to The Detriot News, Ford claims that it has suffered irreparable harm to its F-150 trademark and its lawyers are urging judge to block Ferrari’s use of the trademark in the U.S., award damages, and make Ferrari give up any earned revenues and profits earned in the U.S. through the use of its trademark.  Further, Ford demands $100,000 in damages pursuant to the Anticybersquatting Consumer Protection Act (ACPA) for cybersquatting.  We'll stay tuned for more news from this cybersquatting case. 

Source: Ford sues Ferrari over F-150 name, The Detroit News

Cybersquatting Lawsuits | .CO Domain Names & ClickBank

The payment processing company Click Sales Inc., which operates the poplular service and domain name ClickBank.com, filed a complaint with the World Intellectual Property Forum (WIPO) in order to obtain the .CO ccTLD.  The Clickbank.co domain name is currently registered in China and is listed for sale on Sedo.

Trademark Infringement and Cybersquatting Analysis for Subway v. Subway.SY and Kotifani

On Wednesday I posted an article about how Subway.SY owner Hani Kotifani tried to represent himself pro se (without counsel) against the real Subway restaurant and failed miserably in a cybersquatting / trademark infringement lawsuit and promised that an analysis of the Court’s ruling would be soon to follow. That post can be found here (Trademark and Cybersquatting Lawsuit: Subway Awarded Permanent Injunction, Statutory Damages, and Attorney’s Fees, Against Subway.SY LLC)

Well, here’s the analysis for Doctor's Assocs. v. Subway.SY LLC, 2010 U.S. Dist. LEXIS 83223 (D. Minn. July 30, 2010).

Trademark and Cybersquatting Lawsuit: Subway Awarded Permanent Injunction, Statutory Damages, and Attorney’s Fees, Against Subway.SY LLC

The case is Doctor's Assocs. v. Subway.SY LLC, 2010 U.S. Dist. LEXIS 83223 (D. Minn. July 30, 2010). In this motion before the U.S. District Court for the District of Minnesota, Plaintiff Doctor’s Associates, Inc. (Subway) sought a permanent injunction, statutory damages and attorney’s fees against Defendant Hani Kotifani. 

Background on the Parties involved;

Plaintiff Doctor's Associates, Inc., (Subway) is the federally registered trademark holder for a number of trademarks associated with the FIVE DOLLAR FOOTLONG phenomenon Subway sandwich restaurant chain. Subway restaurants comprise the largest single-brand restaurant-chain in the world, with Subway trademarks found in about 32,000 restaurants. Subway registered the federal trademark for ‘SUBWAY’ on October 20, 1981, long after Subway first used the ‘SUBWAY’ mark on August 21, 1967. Furthermore, Subway registered ‘Subway Eat Fresh’ in 2002 and other stylized version of Subway in 2003 and 2007.

Cybersquatting Cases Update: Court Ruling in BME.com Cybersquatting Case Highlights Important Factors for Determining Whether a Defendant's Conduct Constitutes Cybersquatting

In a decision handed down yesterday, July 26, 2010, by District Judge Philip M. Pro, of the U.S. District Court for the District of Nevada, some very important factors from cybersquatting case law were re-iterated. Judge Pro denied Plaintiff Gregory Ricks’ motion for summary judgment and denied Defendant BMEZINE.com, LLC’s cross-motion for summary judgment in the ongoing cybersquatting lawsuit over control of the profitable three-letter domain name BME.com.

Before ordering that the parties have 30 days to file the proposed joint pretrial order, Judge Pro enumerated some very important determining factors and conclusions regarding the current anti-cybersquatting laws. Those points were first posted in an article on DomainNameWire.com but have been re-produced below;

Law Firm Threatens To File Anticybersquatting Consumer Protection Act (ACPA) Suit Against Former Associate

Law firm Levinson Axelrod has threatened to file suit under the Anticybersquatting Consumer Protection Act (ACPA) against a former associate who registered the levinsonaxelrod.net domain name to create a gripe website titled, "Levinson Axelrod Sucks."  The former associate registered the gripe site domain name to criticize attorneys at his former firm, including the statement that its listing of partners as "SuperLawyers" is a "super scam."  If your trademark has been registered in a domain name, you may have rights under the Anticybersquatting Consumer Protection Act or the Uniform Domain Name Dispute Resolution Policy.  Contact one of our expert domain name attorneys today at 866.936.7447. 

Chris Bosh Wins Cybersquatting Lawsuit, Gives Domain Names Back to University of Michigan Athletes

Toronto Raptors forward Chris Bosh won a cybersquatting lawsuit under the Anticybersquatting Consumer Protection Act against Luis Zavala for the chrisbosh.com domain name earlier this month.  As a part of the decision, Bosh was given the rights to over 800 other domain names that incorporate the names of celebrities, including University of Michigan athletes Darryl Stonum and Laval Lucas-Perry.

Cybersquatter to pay up to $15,000 in Cybersquatting Case Involving Hells Angels' Trademarks

A California man, Terry Myers, who had registered 20 domain names which included Hells Angels' trademarks and attempted to profit from their sale on eBay, has settled the case and has agreed to pay up to $15,000.00 in damages and to transfer the domains over to Hells Angels Motocycle Club. Read about it below:

Hells Angels Cybersquatter Pays Up - Domain Name Wire, July 27, 2009

Hells Angels Sue Alleged Cybersquatter for $2 Million -  Domain Name Wire, Februrary 18, 2009