Posts Tagged ‘ACPA’

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 »

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 »

Heavenly Valley Trademark Owner Wins ChateauHeavenlyVillage.com by Default Judgment in Cybersquatting Lawsuit

Tuesday, July 27th, 2010

The case is Heavenly Valley, LP, et al., vs. Lake Tahoe Development Company, LLC, CIV. NO. S-09-1533 FCD GGH, U.S. District Court for the Eastern District of California, (July 22, 2010 U.S. Dist. LEXIS 74488) and was heard before U.S. Magistrate Judge Gregory G. Hollows.

cybersquatting lawsuitPlaintiffs Heavenly Valley filed the complaint on June 3, 2009 alleging that Defendant improperly and without authorization used the ‘HEAVENLY’ trademarks in the name ‘The Chateau at Heavenly Village.’

A quick search through the Trademark Electronic Search System (TESS) revealed that among the myriad ‘HEAVENLY’ federally registered trademarks the Plaintiffs Heavenly Valley, a Delaware corporation limited partnership, are the registered owners of the ‘HEAVENLY VALLEY’ mark, Serial No. 74151462.

Continue reading Heavenly Valley Trademark Owner Wins ChateauHeavenlyVillage.com by Default Judgment in Cybersquatting Lawsuit »

Good Faith and Bad Faith Analyzed in N.D.C.A. Cybersquatting Claim Brought Under the ACPA – Rearden LLC., v. Rearden Commerce

Friday, July 23rd, 2010

Judge Patel presiding over this case in front of the Northern District of California’s District Court provides Internet Lawyers and lay readers alike with a few great examples of conduct that does / does not constitute ‘good faith’ in a cybersquatting claim brought under the ACPA.

1) A presumption of bad faith flows directly from any indication that a domain name owner, after already being accused of cybersquatting on a mark, registered additional domain names infringing (potentially) on the complainant’s mark to exacerbate the conflict. Instead, any party registering domain names that may potentially be infringing should register those domain names ‘as part of its program to connect with customers’.

2) A presumption of conduct indicating good faith is supported when a domain name owner accused of cybersquatting immediately ceases use of the infringing (allegedly) domain name after the cybersquatting allegations are brought to the domain owner’s attention.

3) (carrying the most weight in this opinion) A domain name owner accused of cybersquatting or trademark infringement can demonstrate ‘good faith’ by offering to unconditionally transfer the (possibly) infringing domain names to the complaining party.

Overview;

Plaintiff in this suit is Rearden LLC (Rearden), founded by Steve Perlman. Rearden owns the federal registered trademark for ‘REARDEN’ – Serial No. 77194957.

The Defendant, Rearden Commerce Inc., (RC), adopted that name in January 2005. RC owns the federal registered trademark for ‘REARDEN COMMERCE’ – Serial No.76632927.

Continue reading Good Faith and Bad Faith Analyzed in N.D.C.A. Cybersquatting Claim Brought Under the ACPA – Rearden LLC., v. Rearden Commerce »

Expensive Political Stunt? The Daily Caller Acquires KeithOlbermann.com, May Result in Trademark or Cybersquatting Dispute

Friday, July 16th, 2010

Tucker Carlson is the editor-in-chief of the premier Keith Olbermann criticism and political commentary site, www.dailycaller.com. The Daily Caller is probably as well known for political commentary as it is known as a platform for jibes, both personal and political, about Keith Olbermann which instigate responses from the political anchor and eventually escalate into Tweet fights that have splashed all across the internet news community. In at least what is initially a very successful move to fan the flames, the Daily Caller purchased www.keitholbermann.com and Tucker Carlson has impudently setup a contact email where you can reach him at [email protected]

trademark cybersquatting disputeThe Daily Caller hasn’t stopped there, they are offering @keitholbermann.com email addresses to the most creative names @kietholbermann.com that get submitted, and all you’ve got to do is ask. To get a keitholberman.com email, go to Win a keitholbermann.com e-mail address.

Early email winners include;

[email protected], [email protected], and [email protected]

Although the Whois registration info has the registrant information hidden behind Domains by Proxy, Inc., the Daily Caller has publicly announced its acquisition of the keitholbermann.com domain name address.

Continue reading Expensive Political Stunt? The Daily Caller Acquires KeithOlbermann.com, May Result in Trademark or Cybersquatting Dispute »

Cyber-squatter Alf Temme Chronicles His Experiences as a Typo-squatting Defendant and Receives Tough Love from Readers

Tuesday, July 6th, 2010

cybersquatting lawAlf Temme has had to face a number of trademark-infringement and cybersquatting actions brought against him mostly in relation to work on his start-up company Domain Name Consolidation Service (DNCS).  In his July 3rd guest-post on the SeattlePI, Temme wrote to inform audiences about DNCS, typo-squatting, and his version of the cyber-squatting suits that he’s faced while attempting to turn DNCS into a viable company.

DNCS was a Web-address consulting firm started by Temme with the aim of advising large corporations about what kinds of URLs they should register to both protect their brand and to avoid consumer confusion and dissatisfaction. By pre-registering domains, DNCS aimed to save these companies large amounts of money they’d likely have to spend down the road in costly litigation to retrieve domains which they should already have owned.

What Temme did was to compile a list of domain addresses he thought these large corporations should register and then he would show a smaller list (about 50% of the domains he thought the company needed to procure) to whomever he could pitch his business idea to within the corporation in the hopes they would hire DNCS for consultation on which domains to register.

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Police Department Loses its Domain Name to a Disgruntled Speeder After it Failed to Renew the Domain Name

Monday, June 21st, 2010

The Bluff City Police Department in Tennessee learned a valuable lesson after a speeder snatched up the domain name rights to www.bluffcitypd.com. It wasn’t that the Bluff City PD had failed to register the domain name; they’d been operating the domain name for years, rather the Bluff City PD let the ball drop when it failed to renew its registration of www.bluffcitypd.com.

This is a common problem faced by domain name owners and a common loophole exploited by cyber-squatters. Typically, a domain name will need to be renewed every year. If the domain name owner fails to renew its registration of the domain name, the registrar will usually treat the domain name as if the owner no longer wants it and will re-insert the domain name into the pool of available domain names.

This is exactly what happened to the Bluff City PD in this case. They hosted the domain name www.bluffcitypd.com on the registrar giant GoDaddy. Furthermore, it is not as if GoDaddy didn’t give ample notice to the Bluff City PD that its domain name was about to expire and required renewal if they wished to continue to hold onto the domain name. It is GoDaddy’s practice to send 5 warning emails to customers before a domain name expires; at 90, 60, 30, 15, and 5 days prior to expiration of the domain name. Also, GoDaddy sends 2 reminders after the domain name has expired; at 5 and 12 days after the domain name has expired. On top of all of this, there is an automatic renewal option, which the PD of course failed to employ; the Bluff City PD could have used this option to make sure their domain name would be automatically renewed before it ever expired.

Continue reading Police Department Loses its Domain Name to a Disgruntled Speeder After it Failed to Renew the Domain Name »