Pattishall IP Blog

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 <> 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 <> 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 <> 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 <> and away from GoPets’ official website located at <>. (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…)

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 <> and <> in connection with a website to criticize Career Agents’ business practices.  The gripe site displayed a single page of text: (more…)

December 14, 2009

MasterCard Prevails In Domain Name Dispute

Filed under: Internet — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 8:10 pm

Judge Stephan P. Mickle of the United States District Court for the Northern District of Florida issued an order in the case of MasterCard International Incorporated v. Michael J. Yanda, d/b/a Indy Web Productions and Finance Globe Portal, Case No. 4:08-cv-00565 (N.D. Fla. Nov. 5, 2009).  Judge Mickle’s order confirms that the registration of multiple Internet domain names containing trademarks owned by another party, or domain name “warehousing”, is a violation of the Anti-cybersquatting Consumer Protection Act (“ACPA”) and constitutes trademark infringement, unfair competition and dilution. (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.

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