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.

October 26, 2011

Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names – Deadline for Sunrise Period for Blocking Registrations is October 28, 2011

Filed under: Internet, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:56 am

Categories: Trademark (General), Internet
Tags: Domain Names, Internet, ICANN, Belinda J. Scrimenti, Jasmine R. Davis

By Belinda J. Scrimenti and Jasmine Davis, Trademark Attorneys

[***Update - . XXX Domain Registry Has Received Over 42,000 Registrations – Deadline
for Sunrise Period for Blocking Registrations is October 28, 2011

ICM Registry, the registry handling .XXX top-level domain (“TLD”) registrations reported this week that it has received over 42,000 applications for .XXX domain names since the September 7, 2011 launch of the Sunrise Period “with thousands more pouring in each day.”  “We are very pleased, but not surprised, by this overwhelming response to the availability of .XXX domains,” said Stuart Lawley, CEO of ICM Registry.  The .XXX domain is intended solely for use by the “adult entertainment” industry.

ICM reported that the number of applications already received is over five times what ICM had anticipated.  ICM also reported that the applications have been “well balanced” between brand owners inside the adult industry and those non-adult brands that want to protect their trademarks.

Trademark owners outside the adult entertainment industry with registered trademarks have only until October 28, 2011 to take advantage of the sunrise period to file for a blocking registration that will prevent use of their trademarks in connection with pornographic uses.  If a trademark owner does not have a registered mark, or misses the deadline, it must wait until December 6, 2011 to file registrations to block others from using their marks in the .XXX domain.  See our August 18, 2011 blog post, below for details on the process.***] (more…)

August 18, 2011

Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names – Sunrise Registration Period for Trademark Owners Begins September 7, 2011

Filed under: Internet, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:15 pm

Categories: Trademark (General), Internet
Tags: Domain Names, Internet, ICANN, Belinda J. Scrimenti, Jasmine R. Davis

By Belinda J. Scrimenti and Jasmine Davis, Trademark Attorneys

Protecting your brand and trademarks from infringement and tarnishment by uses on pornographic and other unsavory websites just got more difficult.  As we reported in April, the Internet Corporation for Assigned Names and Numbers (ICANN) board approved the .XXX sponsored top-level domain (“sTLD”) name in March.  http://bit.ly/q0Cikk  The .XXX domain is intended solely for use by the “adult entertainment” industry, and officially launches on December 6, 2011.  The goal of the domain was to identify the websites as containing sexually explicit content – thus readily allowing adults to discover or avoid such sites, and to control access by children.

The new .XXX domain, however, only leads to greater enforcement problems.  As the existence of the new domain is likely to increase the volume of sites associated with adult content, brand owners must now be concerned that others could use their trademarks to attract audiences to unrelated pornographic sites.  Therefore, to protect the vast majority of brand owners which are not in the adult entertainment industry, but which face the risk of use of their marks in new .XXX domains, ICANN has developed rules allowing such trademark holders to “block” registered marks from the .XXX domain. (more…)

April 21, 2011

.xxx Domain Names Going Live Soon, Brand Owners Prepare to Protect Their Trademarks in a New Online Space

Filed under: Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:21 pm

Categories: Internet
Tags: Domain Names, ICANN, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

For anyone who has ever wanted his or her pornography to reside in one place on the Internet, ICANN has finally accommodated you.  After numerous false starts, the ICANN board approved the .xxx top-level domain (“tld”) name on March 18, 2011, and the tld went live on April 15, 2011.  For a work-safe preview (for now, if you’re reading this after the posting date, click at your own risk), go to http://sex.xxx/.

ICM Registry LLC (“ICM”) will operate the .xxx tld.  Registrations will “wholesale around $60 per domain” with individual registrars setting their own registrant pricing.  See http://www.icmregistry.com/about/faq.php.  Registrations will be limited to entities that “provide online, sexually-oriented adult entertainment intended for consenting adults or for other community members,” representatives of such entities, or entities that provide products or services to such entities.  ICM claims to have received requests reserving about 600,000 domain names already.

Trademark owners, including those that do not fall within the online, sexually-oriented adult entertainment community noted above, will have a chance to register relevant domain names defensively during a Sunrise period.  See http://www.icmregistry.com/about/sunrise.php.  ICM has not detailed the process for this Sunrise period, but here is what we know so far:

Rights owners from outside the sponsored community [will be able to] reserve and therefore block names at the .xxx registry so that they cannot be used as conventional web addresses. ICM will work in close partnership with specialist consultancy, Valideus on the execution of the .xxx rights protection program.

A onetime fee will apply which will cover the submission and processing of the relevant right . . . [and] the standard registry fee will apply for the period or periods of registration applied for.

ICM has requested “early feedback from members of the intellectual property community” to help it organize the Sunrise process.

*          *          *

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 also teaches trademark litigation at John Marshall Law School.

For a printer-friendly version, click here.

November 23, 2010

A National Arbitration Forum Panel Ruled Against the New York Times in its Attempt to Recover dealbook.com From a Domainer, Suggesting That Laches Could Be a Defense to an Action Under the UDRP

Filed under: Internet, UDRP — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:59 pm

Categories:  Internet, Trademark (General)
Tags:  UDRP, Domain-Names, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

The New York Times (“NYT”) operates the very well-known Dealbook reporting service.[1] It wanted the domain name to go along with it.  Finding that <dealbook.com> was owned by domainer[2] Name Administration, Inc. (“NAI”), it filed an action under the UDRP to recover the domain name, arguing that NYT had prior rights in DEALBOOK as a trademark registered in the U.S. and that NAI registered the domain name in bad faith.  Somewhat surprisingly, the NYT lost.  See http://domains.adrforum.com/domains/decisions/1349045.htm. But why?  According to the panel, the NYT failed to submit sufficient evidence to establish its priority in DEALBOOK, but it also could have lost under the doctrine of laches.

NAI registered <dealbook.com> in March 2004.  NYT’s U.S. trademark registrations for DEALBOOK established priority only as early as April 25, 2006.  NYT asserted that it coined the term and used it since October 8, 2001.  To support its priority, NYT also submitted evidence of a $120,000 advertising campaign at the launch of its DEALBOOK service in 2001-2002, as well as other evidence of use prior to 2004. (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…)

July 20, 2010

New .co Domain Names Now Available

Filed under: Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:56 pm

By Alexis Payne, Esq.

Beginning July 20, 2010, the registry operator of the .co top-level domain, .CO Internet S.A.S., is making .co domains available to the general public through registers such as GoDaddy.com, Network Solutions, and Register.com.  The move opens the .co top-level domain, which was once the country code top-level domain (“ccTLD”) for Colombia, to the general public.

Research carried out on behalf of .CO Internet S.A.S revealed that 75 percent of web users said they associated .co with “company,” “corporation,” or other commercial endeavors.  More than twenty countries, including the United Kingdom (.co.uk) and Japan (.co.jp), already use .co domains for their ccTLD’s.  Further, nearly 70 percent of the brands listed in the Brand Finance Top 500 have already been pre-registered as .co domain names, including Amazon, American Express, Apple, BMW, Cartier, Canon, CNN, Coca-Cola, Disney, eBay, Exxon, Ford, Google, Hilton, Honda, IBM, IKEA, Kodak, McDonalds, Microsoft, MTV, Nestle, Nike, Nokia, Panasonic, Pfizer, Samsung, Sony, Toshiba, Toyota, Unilever, Visa, Yahoo, and others. (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…)

Older Posts »

The Silver is the New Black Theme. Blog at WordPress.com.

Follow

Get every new post delivered to your Inbox.

Join 72 other followers