Pattishall IP Blog

January 17, 2014

CrossFit Cybersquatter Gets Dealt Multiple Blows

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:52 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

In CrossFit, Inc. v. Results Plus Personal Training Inc, the panel held that an unsubstantiated “consent to transfer” will not avoid an adverse ruling.  National Arbitration Claim Number: FA1305001498576 (June 28, 2013).  The domain names at issue were <crossfitagawam.com>, <crossfitansonia.com>, <crossfitbeaconfalls.com>, and many other “crossfit”-derivative .com domain names referring to different cities across the United States.

CrossFit, Inc. provided workout and gym products and services.  Its revenue mainly came from licensing its registered CROSSFIT marks and programs to affiliate gyms around the country.  Typically the affiliate would register a “crossfit” domain name that included a geographic designator, e.g., crossfitboston.com.  The Respondent, Results Plus Personal Training Inc., was a competitor of Crossfit.  It registered 113 domain names, most of which “do nothing but add the name of a famous or popular city [to] the CrossFit mark.”  Most were used for parked web pages, often with advertising hyperlinks for Respondent and other competitors.  The panel found that Respondent registered that large amount of domain names “to resell them exclusively to Complainant and its affiliates.”  It was a “bad faith endeavor to confuse Internet users into believing Complainant or its CrossFit mark is at the source of the content, all so Respondent can advance its goals to generate revenue.”

Results Plus argued that GoDaddy.com led it to believe that it could legally register and use these domain names in the manner that it did.  Although CrossFit had filed a federal court action seeking $9 million in damages, the Panel determined that it retained authority to proceed to decision.  To avoid an adverse ruling, Results Plus offered to transfer the domain names to Crossfit on the condition that Crossfit pay Results Plus $1,300, which Results Plus argued was “far less” than it had spent maintaining the 113 domain names.

The Panel observed that an effective consent to transfer does not ordinarily arise when the transfer is subject to the condition precedent of a markholder’s payment of fees. The Panel found that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel.  The Panel observed that this “consent-to-transfer” approach was one way cybersquatters tried to avoid adverse holdings, but it normally was ineffective, especially when the alleged “consent” required the transfer of money to the respondent.  The Panel ultimately found that Results Plus did not have any legitimate interest in the disputed domain names and had acted in bad faith, and ordered the domain names transferred to Cross Fit.

This case highlights that trademark owners can bring an action to transfer  multiple infringing domain names from a single cybersquatter under the Uniform Domain-Name Dispute Resolution Policy (commonly referred to as “UDRP”).  The UDRP sets forth the grounds on which arbitrators base their decisions, but there are several different dispute resolution forums from which to choose, all with their own local rules, procedures and leanings.  While I do not practice CrossFit myself, I know a good 1-2 punch when I see one – and, for now, Results Plus is down for the count.

*          *          *

Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

Click here for a printer-friendly version.

January 15, 2014

Ninth Circuit Declares GoDaddy Not Contributorily Liable For Cybersquatting

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:08 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

In December, the Ninth Circuit held that the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), does not support a cause of action for contributory cybersquatting.  Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 548 (9th Cir. 2013).[1]

Petrolium Nasional Berhad (Petronas), a major oil and gas company with its headquarters in Kuala Lumpur, Malaysia, owns the trademark PETRONAS.  In 2009, Petronas discovered that a third party had registered the domain names “petronastower.net” and “petronastowers.net.”  The third party then used GoDaddy’s domain name forwarding services to forward visitors of the two domain names to a pornographic web site. GoDaddy took no action against the alleged cybersquatting, claiming that (1) it did not host the site; and (2) it was prevented by the Uniform Domain Name Dispute Resolution Policy (“UDRP”) from participating in trademark disputes regarding domain name ownership.  Id. at 548.

Petronas sued GoDaddy in the United States District Court for the Northern District of California on a number of theories, including cybersquatting under 15 U.S.C. § 1125(d), and contributory cybersquatting. Following limited discovery, the district court granted summary judgment in favor of GoDaddy. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 897 F. Supp. 2d 856 (N.D. Cal. 2012) aff’d, 737 F.3d 546 (9th Cir. 2013).  Petronas appealed only with respect to its claim of contributory cybersquatting.

The Ninth Circuit defined cybersquatting as “registering a domain name associated with a protected trademark either to ransom the domain name to the mark holder or to divert business from the mark holder.” Petroliam, 737 F.3d at 550 n. 3 (citing Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 680 (9th Cir.2005)).  Under the ACPA, a person may be civilly liable “if … that person has a bad faith intent to profit from that mark … and registers, traffics in, or uses a [protected] domain name.” 15 U.S.C. § 1125(d)(1)(A). Petronas argued that the ACPA provided for a cause of action for contributory cybersquatting, claiming that “Congress intended to incorporate common law principles of secondary liability into the Act by legislating against the backdrop of the common law of trademark infringement and by placing the ACPA within the Lanham Act.”  Petroliam, 737 F.3d at 550.  The Ninth Circuit disagreed.

Beginning its analysis with the text of the ACPA, the Ninth Circuit noted that the ACPA imposes civil liability for cybersquatting on persons that “register[ ], traffic[ ] in, or use[ ] a domain name” with the “bad faith intent to profit” from that protected mark. 15 U.S.C. § 1125(d)(1)(A). The plain language of the statute thus prohibits the act of cybersquatting, but limits when a person can be considered to be a cybersquatter. Id.  Taking notice that the statute makes no express provision for secondary liability, the Ninth Circuit held that “[e]xtending liability to registrars or other third parties who are not cybersquatters, but whose actions may have the effect of aiding such cybersquatting, would expand the range of conduct prohibited by the statute from a bad faith intent to cybersquat on a trademark to the mere maintenance of a domain name by a registrar, with or without a bad faith intent to profit.” Petroliam, 737 F.3d at 550-51.

Petronas then argued that Congress incorporated the common law of trademark, including contributory infringement, into the ACPA, citing a number of district courts decisions that relied on that reasoning in finding a cause of action for contributory cybersquatting. See Verizon Cal., Inc. v. Above.com Pty Ltd., 881 F.Supp.2d 1173, 1176–79 (C.D.Cal.2011); Microsoft Corp. v. Shah, No. 10–0653, 2011 WL 108954, at *1–3 (W.D.Wash. Jan. 12, 2011); Solid Host, NL v. Namecheap, Inc., 652 F.Supp.2d 1092, 1111–12 (C.D.Cal.2009); Ford Motor Co. v. Greatdomains.com, Inc., 177 F.Supp.2d 635, 646–47 (E.D.Mich.2001).[2]  Again, the Ninth Circuit was not persuaded, holding that the “circumstances surrounding the enactment of the ACPA [. . . ] do not support the inference that Congress intended to incorporate theories of secondary liability into that Act.”  Distinguishing between the Lanham Act’s codification of unfair competition and common law trademark infringement and the ACPA, the Ninth Circuit stated that claims under traditional trademark law and the ACPA have distinct elements. Petroliam, 737 F.3d at 552  (for example, under the ACPA a mark holder must prove “bad faith,” which is not a requirement under traditional trademark infringement claims, and cybersquatting liability, unlike traditional trademark infringement, does not require commercial use of a domain name).[3]  As a consequence, the Ninth Circuit held that the ACPA simply created a new statutory cause of action to address the new cybersquatting problem and that imposing secondary liability on domain name registrars would unnecessarily expand the scope of the ACPA.

The Ninth Circuit’s decision was not surprising.  The purpose of the ACPA and the UDRP is to provide trademark owners with a remedy against those actively using their trademarks in “bad faith.”  As a domain name forwarding provider, GoDaddy simply did not meet the explicit definition of a “cybersquatter.”  Consequently, trademark owners must use the tools the ACPA and the UDRP provide to go after those the ACPA defines as liable, that is, the cybersquatters themselves.[4]

*          *          *

Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.


[2] The Ninth Circuit commented that some of these district courts that recognized a cause of action for contributory liability required that a plaintiff show “exceptional circumstances” in order to hold a registrar liable under that theory. See Above.com Pty Ltd., 881 F.Supp.2d at 1178; Shah, 2011 WL 108954, at *2; Greatdomains.com, Inc., 177 F.Supp.2d at 647. The Ninth Circuit noted that the “exceptional circumstances” test has no basis in either the Act, or in the common law of trademark. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 553 (9th Cir. 2013).  Rather than attempt to cabin a judicially discovered cause of action for contributory cybersquatting with a limitation created out of whole cloth, the Ninth Circuit explicitly declined to recognize such a cause of action in the first place.  Id.

[3] As a practical point, the Ninth Circuit noted that GoDaddy, a registrar holding over 50 million domain names, would have to presumably analyze its customer’s subjective intent with respect to each domain name, using the nine factor statutory test outlined in 15 U.S.C. § 1125(d)(1)(B).  Moreover, domain name service providers would then be forced to inject themselves into trademark and domain name disputes. which is contrary to the purpose of the ACPA and the UDRP. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 549-54 (9th Cir. 2013).

[4] UDRP proceedings are a cost-effective means to protect your trademark online and to keep third parties from diverting people from your legitimate websites and siphoning off ad revenue.

For a printer-friendly version, click here.

January 10, 2014

Kanye West Sends Cease and Desist Letter to Stop New COINYE WEST Virtual Currency

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:01 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

Whether you are in the Yeezus camp or the My Beautiful Dark Twisted Fantasy camp, or even if either of those references mean nothing to you, you might still be interested to know that a new currency is in development – in a few days we will all be able to own some COINYE WEST.  Or will we?

As the Wall Street Journal first reported, Kanye West has tried to stop seven anonymous coders behind a new virtual currency called COINYE WEST, similar to bitcoin.  Not surprisingly, Kanye West, by and through his attorneys, has claimed trademark infringement, unfair competition, cyberpiracy and dilution.  You can read the cease and desist letter here.  While the company has changed its domain name from coinyewest.com to coinyeco.in, the coders launched their site on January 7.

West has built a music empire on his KANYE WEST brand, a brand that, according to West’s interview with BBC Radio 1, is the most influential in the world.  As if being the “number one rock star on the planet” was not enough, West’s “I am a God” statement truly makes him a being to reckon with.

While West might be a bit high and mighty (pun intended), he does understand the importance of protecting his brand.  This situation highlights the cross section between trademark rights and the new and evolving internet frontier.  First it was domain names, then came AdWords, and now crypto currency.  While COINYE WEST might face an uphill battle if the case proceeds to court, similar disputes are certain to arise as new technologies develop.  At Pattishall, we strive to stay on the forefront of emerging technologies.  And, while I may not be in the market for any COINYE in the near future, I will be ready to purchase some KARDASH-CASH if Kim Kardashian ever makes any available.[1]

*          *          *

Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.


[1] KARDASH-CASH is not a real trademark, nor is it a real currency.  I just made it up for fun.

For a printer-friendly copy, click here.

February 23, 2012

What’s In A (Domain) Name? What A Cybersquatter Calls A Web Site By Any Other Name Would Not Sell For A Million Dollars Or Provide A Platform For A Three-Year Old’s Artwork

Filed under: Cybersquatting — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:41 pm

by Phillip Barengolts, Trademark Attorney

In “one [of] a series of domestic disputes between” Paul Bogoni and Vicdania Gomez, Gomez registered the domain names paulbogoni.org and paulbogoni.com without his authorization.[1]  She offered to sell the domain names for $1 million each and posted content on one of them related to certain of her and her daughter’s artwork.  Bogoni sued under the personal name protection provisions of the Anti-cybersquatting Protection Act, 15 U.S.C. § 8131, seeking a preliminary injunction.  He prevailed when Gomez’s defense of use in connection with a copyrighted work failed to show her good faith registration.  Bogoni v. Gomez, No. 11 civ 08093 (S.D.N.Y. Jan. 6, 2012).[2]

Gomez initially populated paulbogoni.org with statements that her three-year old daughter wrote and operated the website, which would donate proceeds to charity from the sale of art objects called “Angel” and “Airplane.”  A message on the site stated, “Hi, I’m Vittoria and this my [sic] first website that my mommy helped me launch in order to begin my journey in making the world a better place.”  The web site advised visitors that the two art objects were constructed at an arts institution named “Make Meaning in the Upper West Side of Manhattan.”  The “Airplane” object was titled “Bogoni.”  Finally, the web site displayed the following statement: “I will am [sic] also selling this domain name http://www.PAULBOGONI.ORG and http://www.PAULBOGONI.COM for $1Million (ONE MILLION DOLLARS) each.”  A photograph of “Airplane” appeared on the web site a month after the filing of Bogoni’s complaint and Gomez never explained the relationship between the name Bogoni and the “Airplane.”

Under these facts, Bogoni satisfied his burden to show that Gomez: (1) registered a domain name that consists of his name; (2) did so without the Bogoni’s consent; and (3) had the specific intent to profit from Bogoni’s name by selling the domain name for financial gain.[3]  The court’s analysis turned on the availability of a defense to cybersquatting liability for

“good faith registration of a [personal] domain name . . . if such name is used in, affiliated with, or related to a work of authorship protected under Title 17 . . . and if the person registering the domain name is the copyright owner or licensee of the work [and] the person intends to sell the domain name in conjunction with the lawful exploitation of the work.”

15 U.S.C. § 8131(1)(B).

The Court found that Gomez exhibited an absence of good faith based upon the facts in evidence, and her offer to sell the domain names was not “in conjunction” with the sale of the two art objects.  Thus, she did not qualify for this copyrighted work defense.  The Court’s injunction did not require Gomez to transfer the domain names, however, but only required her to stop using them, which she did by removing all content.  Currently, paulbogoni.org simply states “underconstruction.”

This decision illustrates a key distinction between a claim over the use of a personal name as a domain name under the ACPA versus the Uniform Domain Name Dispute Resolution Policy: the UDRP does not protect personal names that are not trademarks as well, even the names of famous people who do not use their names in connection with a designation for their business.  See http://www.wipo.int/amc/en/domains/search/overview2.0/ (response to question 1.6).  Business executives who find themselves subject to attack or pseudo-extortion through domain names incorporating their personal names may be able to take advantage of this targeted ACPA claim, as well as claims under state laws protecting rights of privacy.

* * *

Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Oxford University Press.


[footnotes]

[1] Although the Court is vague on specifics, this statement is telling: “[T]he parties made clear to the Court during oral argument that the parties’ relationship is, at the very least, contentious.”

[3] The Court discussed at some length whether Bogoni satisfied the third prong of this test because of some prior decisions finding that personal name cybersquatting to recover a debt would avoid liability.  See Carl v. BernardJCarl.com, 409 F. App’x 628, 630 (4th Cir. 2010) (per curium) (unpublished).

For a printer-friendly version, click here.

November 3, 2011

District Court Permits Reverse Domain Name Hijacking Claim To Proceed Despite National Arbitration Forum Decision Ordering Transfer Of Domain Name To Defendant

Filed under: Cybersquatting, Litigation — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:14 pm

Categories: Cybersquatting, Litigation
Tags: Cybersquatting, Reverse Domain Name Hijacking, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

Marc Lurie loved indoor skydiving so much he invested in it.  In 2006, he decided to use the name AIRFX for a new line of wind tunnels.  He lined up a manufacturer and discussed his plans with one of the largest operators of indoor skydiving facilities in the country, and in 2007 he acquired the domain name <airfx.com>.  As far as this author knows, Mr. Lurie has not launched the business or the website as of the date of this post.[1]

AirFX, LLC, owns a federal registration for the trademark AIRFX for shock absorbers and suspension systems for vehicles.  In 2008, after learning that Lurie owned <airfx.com>, AirFX contacted him and threatened to sue him if he didn’t sell the domain name to AirFX.  That didn’t work, so a couple of years later, they sent another letter, and Lurie again refused to sell.  Finally, in April 2011, AirFX filed an action under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), which AirFX won a month later.[2]

That victory spawned the instant suit by Lurie for reverse domain name hijacking under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. s 1114(2)(D)(v).  AirFX moved to dismiss, but was denied.  See AirFX.com v. AirFX, LLC, 11-cv-01064 (D. Ariz. Oct. 20, 2011).[3]  The court found that to state a claim for reverse domain name hijacking, Lurie had to allege that: (1) plaintiff is a domain name registrant; (2) plaintiff’s domain name was “suspended, disabled, or transferred under a policy implemented by a registrar as described in 15 U.S.C. § 1114(2)(D)(ii)(II)”; (3) the trademark owner prompting the domain name to be transferred “has notice of the action”; and (4) plaintiff’s use or registration of the domain name is not unlawful.  (Citations omitted).

Lurie’s allegations met these requirements.  Specifically, Lurie alleged that his actions were not unlawful under the ACPA because Lurie had developed the AIRFX brand as part of his plan to develop wind tunnels and registered <airfx.com> to reflect the domain name of his intended brand.  Additionally, Lurie had not used AirFX’s trademark, never offered to sell the domain name, and did not seek to divert AirFX’s customers.[4]

AirFX’s main arguments against Lurie’s claim were the findings by the National Arbitration Forum panel in the proceeding under the UDRP and that a reverse domain name hijacking claim requires a showing of harassment.  The court ruled that the UDRP panel’s decision was entitled to no weight and that there was no requirement of harassment to state a claim.

Trademark owners should be mindful that UDRP proceedings are not without their potential downsides, especially when a legitimate business (or, at least, an entity with the appearance of a legitimate business) is on the other side of a claim.  It is also worthwhile to assess whether to proceed under the UDRP or the ACPA.  UDRP proceedings are cheaper and faster, but difficult cases under the UDRP could, as they did here, lead to reverse domain name hijacking claims under the ACPA, snatching defeat out of the jaws of victory.

*          *          *

Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, recently published by Oxford University Press.


[footnotes]

[1] But someone applied to register AIRFX with the United States Patent and Trademark Office for making wind tunnels for others at the end of June on an intent-to-use basis.

[2] The National Arbitration Forum decision is available here: http://domains.adrforum.com/domains/decisions/1384655.htm

[4] Even though the domain name had not yet been transferred to AirFX, the Court found that Lurie had satisfied the second prong of the test.

For a printer-friendly version, click here.

October 4, 2011

The Ninth Circuit Finds that Re-registering a Domain Name Originally Registered Before a Trademark Owner Acquires Rights Does Not Constitute a Violation of the Anticybersquatting Protection Act

Filed under: Cybersquatting, Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:55 am

Categories:  Internet, Cybersquatting
Tags: Internet, ACPA, Cybersquatting,Phillip Barengolts

By Phillip Barengolts, Trademark Attorney

In GoPets Ltd. v. Hise, __ F.3d __, Nos. 08-56110, 08-56114 (9th Cir. Sep. 22, 2011),[1] the Ninth Circuit had an opportunity to review the applicability of the Anticybersquatting Protection Act (ACPA) to re-registration of a domain name in connection with the business activities of domainers.[2]  The case serves as a lesson to start-ups, brand owners, domainers, and their attorneys about how to handle disputes over domain names that acquire value because of a use arising after the original registration of the domain name.

Edward Hise registered the domain name <gopets.com> in 1999 with the alleged intent of providing a web portal regarding pets in connection with his cousin’s veterinary business.  Since then he and his brother Joseph decided to become domainers through their corporation Digital Overtures, which registered over 1300 domains during the aughts.

In 2004, GoPets Ltd., a Korean company, created a game called “GoPets” featuring virtual pets and obtained a trademark registration for GOPETS in the U.S. in 2006.  From 2004 – 2005 GoPets attempted to acquire the <gopets.com> domain name from Edward Hise, but he wouldn’t sell for the amounts proposed by GoPets – no more than $1,000.  Digital Overtures re-registered <gopets.com> in 2006.

GoPets then filed a complaint with the World Intellectual Property Organization (WIPO) under the Uniform Dispute Resolution Policy (UDRP).  It lost because the WIPO arbitrator found that the UDRP required the transfer of a domain name only “if the name was initially registered in bad faith.”  This decision resulted in GoPets ultimately offering $40,000 for the domain name.  Not only did the Hises reject this offer, they sent a letter to GoPets threatening., among other things, to use search engine optimization to drive traffic to <gopets.com> and away from GoPets’ official website located at <gopetslive.com>. (more…)

November 5, 2010

Use of a Domain Name, Originally Registered with a Trademark Owner’s Permission, to Extract Payment from the Trademark Owner Violates the Anticybersquatting Consumer Protection Act

Filed under: Cybersquatting, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:46 pm

by Phillip Barengolts, Trademark Attorney

Domain names have become increasingly important to business.  Consumers expect to find a brand at the eponymous domain name.  When that expectation is thwarted, a consumer may shop somewhere else – much to the harm of the business.

Fortunately for brand owners, Congress passed the Anticybersquatting Consumer Protection Act (ACPA), which establishes liability where: 1) a defendant “has a bad faith intent to profit” from the use of a protected trademark; and 2) the defendant registers, traffics in, or uses a domain name that is identical or confusingly similar to the protected mark.[1] The Ninth Circuit found in DSPT Int’l, Inc. v. Nahum, No. 08-55062 (9th Cir. Oct. 27, 2010),[2] that a bad faith intent to profit from a domain name may arise at any time a defendant owns the registration for a domain name – not only at the time of registration. (more…)

June 16, 2010

Google’s Alleged Licensing of Domain Names as Part of its AdSense Program may Subject it to Liability under the Anticybersquatting Consumer Protection Act

Filed under: Cybersquatting, Internet, Pattishall — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:29 pm

by Phillip Barengolts, Trademark Attorney

In a case that tests the limits of contributory liability under the Anticybersquatting Consumer Protection Act (ACPA), Judge Blanche Manning of the Northern District of Illinois denied defendant Google’s motion for summary judgment on the plaintiffs’ cybersquatting claim that Google should be held liable for servicing the parking pages of registrants’ allegedly cybersquatting domain names.[1] Vulcan Golf, LLC v. Google, Inc., No. 1:07‑cv-03371, slip op. (N.D. Ill. June 9, 2010) (Memorandum and Order).  Specifically, the court held that, where Google’s agreement with a third party contains a license permitting Google to use a parked domain name for purposes of placing Google’s advertising (sponsored links) on the web site displayed when an Internet user enters the domain name, Google may be held liable under plain language the ACPA as an “authorized licensee” of the registrant if the underlying domain name violates the ACPA.  Vulcan Golf, slip op. at 8.  See 15 U.S.C. § 1125(d)(1)(D). (more…)

March 26, 2010

Gripe Site Survives ACPA and Trademark Infringement Claims

Filed under: Cybersquatting, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 7:00 pm

By David Beeman, Attorney

Gripe sites, websites that criticize a company or its products or services, present tricky problems for trademark owners due to the protections of the First Amendment.  Career Agents Network, Inc. v. White, 09-CV-12269-DT, slip op. (E.D. Mich. Feb. 26, 2010), illustrates the pitfalls of taking legal action to stop these sites.  Career Agents Network (“Career Agents”) sued White for using the domain names <careeragentsnetwork.biz> and <careeragentnetwork.biz> in connection with a website to criticize Career Agents’ business practices.  The gripe site displayed a single page of text: (more…)

January 28, 2009

Pattishall Lawyers win Victory for American College of Trial Lawyers

Filed under: Cybersquatting, Pattishall, UDRP — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 6:14 pm

David Hilliard and Ashly Iacullo prevailed in a proceeding, winning the domain names and on behalf of the American College of Trial Lawyers. The WIPO panelist found that the domain names were confusingly similar to the College’s federally registered marks AMERICAN COLLEGE OF TRIAL LAWYERS and that the respondent failed to show any legitimate rights in the names.

After the ICANN Complaint was filed with WIPO in November, the respondent filed a declaratory judgment action in the state court of Alabama and also registered the domain name . The College successfully removed the action from state court to the United States District Court for the Middle District of Alabama and counterclaimed under the Anti-Cybersquatting Act, adding the recently registered domain name and seeking statutory damages. This is just one of many trademark disputes between the American College of Trial Lawyers and the respondent and his related-organization. Cases are pending before the United States District Court for the Middle District of Alabama and the United States Trademark Trial and Appeal Board.

Visit www.pattishall.com for more information.

Theme: Silver is the New Black. Get a free blog at WordPress.com

Follow

Get every new post delivered to your Inbox.

Join 86 other followers