Archive for August, 2010

Cybersquatting Over Trademark Rights in Domain Names: Adultcon Says Exxotica’s Trademark is Generic

Friday, August 20th, 2010

In an article posted on Thursday on Xbix, the dispute between two adult fan-show giants, Exxxotica and Adultcon was highlighted. The adult entertainment companies are gearing up to square off against each other in court in a dispute over ownership and use of 19 allegedly infringing domain names.

domain name dispute cybersquatting lawsuitThe cybersquatting lawsuit was filed this earlier this summer in June by Exxxotica. Exxxotica is seeking the maximum statutory damage award ($100,000 for each cybersquatted domain name) under the Anti-cybersquatting Consumer Protection Act (ACPA).

The dispute between the adult fan-show companies has at its epicenter the Los Angeles Convention Center, where Adultcon has been holding shows for years. However, this year Exxxotica decided to expand its fan base (which normally is covered by Exxxotica shows in Miami and New Jersey) into the L.A. market by scheduling a show at the same venue Adultcon has been regularly hosting adult show events.

Continue reading Cybersquatting Over Trademark Rights in Domain Names: Adultcon Says Exxotica’s Trademark is Generic »

Molson Loses Cybersquatting Judgment and Ordered to Pay Attorney’s Fees in the Ontario Superior Court After Previously Winning Arbitration Domain Name Dispute

Thursday, August 12th, 2010

This case flies in the face of a seemingly growing trend in cybersquatting domain name disputes. More often than not, when a large company challenges ownership of a domain name that bears the company’s trademark somewhere in the web address that company is awarded the ‘infringing’ domain name. Actually, this is exactly what happened initially in the dispute over ownership of www.Canadian.biz.

cybersquatting and domain name dispute caseThe norm in recent court rulings involving internet litigation has been to reinforce a trend in cybersquatting disputes being decided in favor of large companies. Following are some examples of representative of this trend;

* ArcelorMittal Awarded 5 Cybersquatted Domain Names in WIPO Arbitration Proceeding

* Metropark USA Wins Default ‘in rem’ Cybersquatting Judgment 

* Verizon’s Landmark Cybersquatting Victories in the US Courts 

* BMEZine Contests Ownership BME.com

Continue reading Molson Loses Cybersquatting Judgment and Ordered to Pay Attorney’s Fees in the Ontario Superior Court After Previously Winning Arbitration Domain Name Dispute »

The Worlds Largest Steel Producing Company ArcelorMittal Awarded 5 Cybersquatted Domain Names in WIPO Dispute Arbitration Proceeding

Monday, August 9th, 2010

Ranking in at 99th on the 2010 Fortune Global 500 list, the largest steel producing company in the world won a cybersquatting judgment in a World Intellectual Property Organization (WIPO) dispute arbitration proceeding. In 2007 alone, The Avenue de la Liberté, Luxembourg headquartered ArcelorMittal produced 116 million tonnes of crude steel representing 10% of the world’s steel output.

cybersquatting and domain name dispute complaintsIn its complaint arguing for the panel to recognize the uniqueness of the ‘ARCELOR’ mark, ArcelorMittal stated, “It has no meaning in English or in any other language. A Google search of the word “arcelor” displays several results, all related to the complainant (ArcelorMittal).”

Continue reading The Worlds Largest Steel Producing Company ArcelorMittal Awarded 5 Cybersquatted Domain Names in WIPO Dispute Arbitration Proceeding »

Cybersquatting Cases Update: Zuccarini Threatens Legal Action Against Auctioneers Readying to Auction Off His Remaining Domain Names

Friday, August 6th, 2010

There is a proposed court order, still currently under consideration, to the effect that John Zuccarini’s remaining domain names will be sold at the TRAFFIC conference in Dublin taking place in October. The Zuccarini domain names would be sold to settle tax liens and a cybersquatting judgment against Zuccarini brought by Office Depot.

Apparently Zuccarini has contacted auction promoter Rick Latona and TRAFFIC organizers Rick Schwartz and Howard Neu, with threats of legal action if they proceed with auctioning off the remaining domain names.

In response to the letters, Henry M. Burgoyne of Kronenberger Burgoyne, LLP, filed an application of contempt of court (PDF – courtesy of DomainNameWire) by Zuccarini for allegedly interfering with the auction plans.

Continue reading Cybersquatting Cases Update: Zuccarini Threatens Legal Action Against Auctioneers Readying to Auction Off His Remaining Domain Names »

Metropark USA Wins Domain Name from a Cybersquatter in in rem Default Judgment

Friday, August 6th, 2010

U.S. Magistrate Judge Theresa Carroll Buchanan granted Plaintiff Metropark USA a permanent injunction transferring ownership of Defendant www.Metropark.net in the Anti-cybersquatting Consumer Protect Act and federal trademark infringement in the case Metropark United States v. Metropark, 2010 U.S. Dist. LEXIS 78674 (D. Va. 2010).

The decision (but because it is a Magistrate ruling it is really only a recommendation) was rendered and entered in default on July 8, 2010 in the U.S. District Court for the Eastern District of Virginia, Alexandria Virginia. In this federal cybersquatting claim, the D.C. for the E.D. Virginia exercised in rem jurisdiction over Defendant Domain Name www.Metropark.net and because the Domain Name registrant failed to reply to the complaint or otherwise appear before the court in these proceedings the Magistrate judge entered her recommendation in a default rulingcybersquatted trademark domain name against the Defendant Domain Name.

Brief history of the parties involved;

Continue reading Metropark USA Wins Domain Name from a Cybersquatter in in rem Default Judgment »

After Landmark Victories in the US Courts, Verizon Changes Tactics to Pursue Cybersquatters Through UDRP Arbitration Disputes

Tuesday, August 3rd, 2010

Despite winning some really landmark cases and having marked success in protecting its ‘VERIZON’ trademark through cybersquatting lawsuits brought under the ACPA, Verizon has recently changed up its method for pursuing cybersquatters. Previous victories in the US court system for Verizon have been against companies such as Navigation Catalyst Systems and OnlineNic.cybersquatting domain names

Verizon’s most recent efforts to fight cybersquatting of its ‘VERIZON’ mark have been in the form of Uniform Domain-name Resolution Policy (UDRP) arbitration disputes filed through the World Intellectual Property Organization (WIPO).

Presently, Verizon has at least two live UDRP complaints still pending and has won a victory for ‘VERIZON’ cybersquatted domain names including;

Continue reading After Landmark Victories in the US Courts, Verizon Changes Tactics to Pursue Cybersquatters Through UDRP Arbitration Disputes »

Analysis of Personal Jurisdiction in a Claim for Cybersquatting Under the ACPA and the Lanham Act

Monday, August 2nd, 2010

The Digby Adler Group LLC v. Image Rent a Car, Inc. decision rendered on July 20, 2010, presented a great opportunity to examine personal jurisdiction analysis in relation to a cybersquatting claim.

cybersquatting law trademark infringementThe case is Digby Adler Group LLC v. Image Rent a Car, Inc., 2010 U.S. Dist. LEXIS 76309, 1-2 (N.D. Cal. July 20, 2010). Plaintiff Digby Adler Group LLC (Adler) originally filed suit in federal district court in the Northern District of California against Defendants Image Rent A Car, Inc. (Image) and Van Rental Co., Inc. (Van Rental), alleging cybersquatting, unfair competition, and false advertising under the Lahnam Act, as well as common law trademark infringement and violation of Section 17200 of California’s Business and Professions Code.

The instant decision was for a Motion to Dismiss or Transfer Venue to the Eastern District of New York and was issued by U.S. District Judge Samuel Conti.

Brief background of the parties involved;

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