The 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.

Exxxotica alleges that Adultcon has registered and is using 19 domain names infringing on Exxxotica’s federally registered trademark ‘EXXXOTICA’. The domain names in dispute are;

Exxxotica-lv.com, ExxxoticaExpo-LA.com, ExxxoticaExpo-LV.com, ExxxoticaExpoLA.com, ExxxoticaExpoLV.com, ExxxoticaLA.com, ExxxoticaLasVegas.com, ExxxoticaLosAngeles.com, Exxxoticalv.com; ExxxoticaVegas.com; ExoticaExpo-LA.com, ExoticaExpo-LV.com, ExoticaExpoLA.com, ExoticaExpoLV.com, ExoticaLA.com, ExoticaLosAngeles.com, ExoticaLV.com, ExoticavaLasVegas.com and ExoticaVegas.com.

In response to the cybersquatting allegations, Adultcon argues that Exxxotica’s trademarks have become generic and thus unenforceable;

It will be very interesting to see how this dispute plays out. From a cursory inspection of the 19 disputed domain names, it appears that Adultcon may have subjected itself to massive liability (19x $100,000).

Because everyone of the 19 disputed domains bears some form of Exxxotica’s ‘EXXXOTICA’ trademark, unless Adultcon can prove that Exxxotica’s trademarks are generic it is possible that Adultcon could be left paying huge fines in statutory damages for these 19 disputed domain names.

In 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).”

The WIPO decision was handed down on July 23, 2010 by a sole panelist, James A Barker. The panelist found that Defendant Taj Group of Companies (a Mumbai-based firm) was in violation of the federal Anti-cybersquatting Consumer Protect Act (ACPA) and infringing on AcelorMittal’s trademark for its conduct in registering and use of the following domain names:

1. www.arcelorcement.com
2. www.arcelorchemicals.com
3. www.arcelorchemicals.net 
4. www.arcelorlaboratories.com
5. www.arcelorlabs.com
Presiding over and deciding the WIPO arbitration dipute, Barker found that the above mentioned names all infringed upon AcelorMittal’s ‘ARCELOR’ (Reg. No 2935304) and ‘ARCELORMITTAL’ (Reg. No 3643643) federally registered trademarks. Furthermore, Panelist Barker found that the domains were registered in bad faith and that each of the five disputed domains were either in part identical or confusingly similar to ‘ARCELOR’ trademarks.

Consequently, the WIPO issued the finding on this proceeding that the five disputed domains should be turned over to AcelorMittal.

The WIPO case is – Arcelormittal v. PrivacyProtect.org, Taj Pharmaceuticals Ltd., Taj Group of Companies, Case No. D2010-0899

For more related information on this lawsuit and on cybersquatting in general;

ArcelorMittal wins cybersquatting case

ArcelorMittal wins cybersquatting case against Mumbai firm

ArcelorMittal wins cybersquatting case against Mumbai firm

Wiki – Arcelor Mittal

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.

Burgoyne’s application reproduces communications from Zuccarini to Latona, Schwartz, and Neu threatening legal action if they proceed to auction the domains at TRAFFIC while there are ongoing legal disputes. The application covers this communication from Zuccarini to Neu over Neu’s previous representation of Zuccarini in the Office Depot lawsuit, Zuccarini’s letter reads;

“As you are aware, as you represented me when the Office Depot case was first filed in April 2000, and while your name is not present on the Pacer web site, you had make telephone contact with the attorney of record at that time for Office Depot in hopes of coming to a settlement, although that did not work out in the end.

You did as you may recall, as I checked the Pacer site today, on December 13, 2000 file an affidavit on my behave, although it was rejected by the Court, as you had forgotten to use lined numbered paper for the document. No doubt though that document is on file with the court.

In consideration of these circumstances, I believe it to be extremely unethical, for you to conduct and if not illegal, also completely unethical, for you to financially benefit from any auction of the domain names for the Office Depot case.”

Internet Lawyers should stay tuned to these interesting developments to see how the court handles this newest matter in the ongoing John Zuccarini cybersquatting disputes.

For more information on John Zuccarini, cybersquatting domain names, and some history of Zuccarini’s typosquatting domain names;

Domains Attached to a Legal Judgment Accidently Auctioned Off on NameJet, Catching $65,000

Latona’s to Auction Off Remaining Zuccarini Domains at TRAFFIC

The Anticybersquatting Consumer Protection Act

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 ruling against the Defendant Domain Name.

Brief history of the parties involved;

Plaintiff Metropark USA is a Delaware corporation and has continued to be the federally registered trademark owner of the mark at issue, the plain text ‘METROPARK’, since September 2004. Metropark USA is also the valid registrant of www.Metroparkusa.com, through which it solicits and offers services in the business of operating retail stores and selling men’s and women’s clothing and accessories to millions of people each year.

On October 2, 2009, a registrant registered the domain name www.Metropark.net (Defendant/Domain Name). Subsequent to registration, the Domain Name has been used commercially by the registrant to advertise the sale of men’s and women’s clothing and accessories in competition with Metropark USA’s services. Web users who visit the Domain Name are presented with links to commercial web sites other than that operated by Plaintiff where they can find goods and services that are substantially identical to and competitive with the goods and services offered by Metropark USA.

Metropark USA sought a permanent injunction to transfer ownership of the Domain Names to Metropark USA;

Plaintiff Metropark USA alleged that it had suffered and continues to suffer, irreparable harm to its reputation and goodwill as a result of the registration and ongoing use of the Domain Name. Therefore, Metropark USA sought a permanent injunction transferring ownership of the Domain Name to Metropark USA.

The Lanham Act under the Anti-cybersquatting Consumer Protection Act;

Under authority provided by the Lanham Act, Metropark USA was able to file an in rem civil action against the Domain Name in the district in which the domain name registrar, registry, or other authority that registered or assigned the domain is located, where that domain name violates any right of the owner of a mark protected under 15 U.S.C. § 1125(a) or (c).

Consequently, Metropark USA was able to bring this action against the www.metropark.net domain name in the U.S. District Court for the Eastern District of Virginia, Alexandria Virginia, because the registry service for that domain name is located within the district.

In support of a finding of bad-faith registration of the Domain Name;

Although this is an in rem proceeding against the Domain Name and not the registrant (owner), a finding of a history of bad-faith domain name registration on behalf of the registrant does lend weight to a determination of bad-faith registration in the current proceeding. Along these lines, Magistrate Judge Buchanan found these factors highly influential in determining whether the current Domain Name registration was in bad-faith;

1. Registrant previously involved in numerous past actions in which it was accused of engaging in a pattern of bad-faith registration and use of domain names;
2. Registrant lost numerous proceedings in which it was accused of engaging in a bad-faith registration and use of domain names; and
3. Registrant is the current registrant of multiple domain names that typoquat or mimic famous trademarks of third-parties, including <bankofamericaa.com>, <dicksportinggood.com>, <abcnewschicago.com> and <officedeppotcom.com>.

Magistrate Judge Buchanan found: a likelihood of confusion between the Defendant domain name and Plaintiff’s services; Defendant’s registrant engaged in a pattern of bad faith registration; and Defendant domain name was registered with bad faith intent of profiting from Plaintiff’s trademark;

“The Domain Name is continuing to be used to market goods and services that are substantially identical to and competitive with the goods and services that plaintiff offers under the Mark. (Compl. ¶ 20.) The minimal differences between the site associated with the Domain Name and plaintiff’s site merely serves to further deceive customers and harm plaintiff. Additionally, registrant has engaged in a pattern of bad faith registration and use of domains by acquiring multiple domain names which it knows to be identical or confusingly similar to the marks of others that are distinctive at the time of registration of such domain names. (Compl. ¶¶ 40-41.).”

Conclusion;

U.S. Magistrate Judge Theresa Carroll Buchanan delivered the opinion of the court, recommending that default judgment be entered in favor of Metropark USA for the transfer of ownership of the Domain Name (www.metropark.net) for violations of the Anti-cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(a).

For more Internet Lawyer information and updates for Trademark Infringement Attorneys on cybersquatting, trademarks, and domain name disputes;

UDRP Arbitrator Shares Insights on Trademark, Domain Name Disputes and Cybersquatting Issues

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

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;

• verizoin.com
• verizonswireless.com
• verizonwieless.com
• verizoon.com
• verizopn.net
• versizon.net
• vewrizon.net
• virazon.com
• verion.com

Speculators suggest that Verizon’s recent change of tactics could be a result of the location of the cybersquatted domains being foreign, thus making it harder to get a judgment against the trademark infringing domains via US court system.

For more information on Verizon’s fight against cybersquatters to protect its intellectual property rights check out any of these;

Domains Dispute Alert: A federal court in Northern California has awarded $33.15 million in a default judgment to Verizon Communications in what the company is calling the largest cybersquatting judgment ever

Verizon v Navigation Catalyst Cybersquatting Lawsuit Settled: NCS Continues to Cybersquat Trademark Protected Domains

Verizon Changes Tactics: Files UDRP Complaints Instead of Lawsuits

Plaintiffs 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.

Magistrate Judge Hollows noted that jurisdiction was properly asserted over Defendants by the California E.D. court and that Defendants failed to file an answer to the summons and complaint or otherwise failed to appear for this action. Therefore, the Magistrate Judge directed that default judgment be entered against Defendant Lake Tahoe Development Company.

After determining that an entry of default judgment was warranted, Magistrate Judge Hollows then assessed Heavenly Valley’s requests for injunctive relief. Although Hollows did not address how the unfair business practice (non-compete) of false advertising might have played a roll in Defendant Lake Tahoe Development Company’s use of the ‘HEAVENLY’ mark to refer to its product, he did address cybersquatting and trademark infringement claims. After enumerating that the Lanham Act provides injunctive relief to prevent trademark infringement and the Anti-cybersquatting Consumer Protection Act (ACPA) provides for injunctive relief to prevent use of a confusingly similar mark in a domain name, he said;

“The injunctive relief requested is reasonable and specifically tailored. Plaintiffs seeks to permanently enjoin defendant from using the name, “The Chateau at Heavenly Village,” the internet domain name www.chateauheavenlyvillage.com, Heavenly’s trademarks or other confusingly similar designations. Plaintiffs also seeks an order preventing defendant from using or reproducing any of the Heavenly trademarks as part of a brand name for its products or services, including the aforementioned names. Also requested is an order requiring defendant to destroy all items in their possession which contain the Heavenly trademarks or aforementioned names. In regard to the www.chateauheavenlyvillage.com domain name, plaintiffs seek an order requiring defendant to relinquish all interest in it or any confusingly similar domain name and transfer all such domain names to HVLP. Finally, plaintiffs seek a permanent injunction preventing defendant, or others acting in concert with defendant, with actual notice from aiding anyone else in engaging in any of the aforementioned activities.”

Magistrate Hollows determined that all of Plaintiff Heavenly Valley’s requests were reasonable and specifically tailored and resolved to recommend to the U.S. District Judge assigned to the case that Plaintiff’s request for injunctive relief be granted accordingly to the terms set forth in Plaintiff’s proposed judgment (quoted above).

Curiously, Lake Tahoe Development Company is still in possession of the domain chateauheavenlyvillage.com. It will interesting to find out if this Magistrate ruling on cybersquatting and trademark-infringement is implemented by the District Judge. If so, Heavenly Valley will likely immediately change traffic going to chateauheavenlyvillage.com to redirect to the Heavenly Valley Website or change chateauheavenlyvillage.com to advertise Heavenly Valley products/services.

Magistrate Hollows’ full recommendation can be found here, Valley v. Lake Tahoe Dev. Co., 2010 U.S. Dist. LEXIS 74488 (E.D. Cal. July 22, 2010)

Information for Internet Lawyers: more information and related articles on the ACPA, the Lanham Act, and Cybersquatting;

Attorneys Handling Cybersquatting Cases Under the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA)

Domain Name Registrars & Cybersquatting: How The ACPA Applies To GoDaddy Parked Pages

Domain Name Dispute and Arbitration Resources

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.

At issue in this ACPA lawsuit are the following domain names; ReardenInc.net, ReardenInc.org, ReardenInc.us, ReardenCo.com, ReardenCo.net, ReardenCo.org, ReardenCo.us, ReardenC.net, ReardenC.org, ReardenC.us, ReardenLLC.com, ReardenLLC.net, ReardenMobile.com and MobileRearden.com.

Brief background history of this suit and of the Parties involved;

Steve Perlman is an intellectual property entrepreneur and inventor who co-founded WebTV and acted as the former president & CEO of OnLive. Perlman also founded Rearden Steel, Inc. in 1999 and later changed the company’s name to Rearden LLC. Through Rearden LLC, Perlman registered and has continually used rearden.com since 2001 and has since then procured federal trademark registrations for ‘REARDEN’, ‘REARDEN STEEL’ (no longer a live mark), ‘REARDEN STUDIOS’, ‘REARDEN COMMUNICATIONS’ and ‘REARDEN COMMERCE EMAIL’ among others.

Defendant RC registered the following families of domain names on March 4, 2005: ReardenInc (ReardenInc.net, ReardenInc.org and ReardenInc.us); ReardenCo (ReardenCo.com, ReardenCo.net, ReardenCo.org and ReardenCo.us) and ReardenC (ReardenC.net, ReardenC.org and ReardenC.us).

On October 8, 2006, RC opened up dialogue with Rearden about purchasing the Rearden.com domain. Two days later, Perlman replied stating: 1) the domain name was not for sale; 2) he had obtained an extension of the review period for RC’s “Rearden Commerce” trademark application; and 3) he was considering seeking a further extension to decide whether to oppose the application.

Later that October, after receiving Rearden’s negative reply to its offer to purchase Rearden.com, RC instructed its employees to register both ReardenLLC.com and ReardenLLC.net.

Judge Marilyn Hall Patel, presiding over this Northern California District Court case, acknowledged in the opinion that Sandoval (as RC’s counsel) may have been on tenuous ground by registering ReardenLLC.com;

“At this time, Sandoval was aware both that Perlman’s company was a limited liability company (“LLC”) and that RC was not and had never been an LLC. Nor were there any plans regarding RC becoming an LLC. Indeed, RC does not and has not ever used the phrase “Rearden LLC” to refer to or describe its business, and neither party has applied for a federally registered trademark for “ReardenLLC.” Sandoval testified that “there’s no written policy” for registering domains, “processes were informal,” “a lot of it’s haphazard,” and “there was no rhyme or reason to it.”

Defendant RC didn’t stop there, in November 2006 it went on to register ReardenLLC.net, ReardenMobile.com and MobileRearden.com.

Plaintiffs filed suit on November 30, 2006.

Rearden LLC, et al., v. Rearden Commerce, Inc., No. 06-7367, N.D. Calif.; 2010 U.S. Dist. Lexis 65567

In this opinion, decided on July 1, 2010, Judge Patel decided both parties’ cross-motions for summary judgment regarding impermissible cybersquatting under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), and unfair competition under California Business and Professions Code section 17200 as it relates to cybersquatting.

Plaintiff Rearden moved for summary judgment regarding the ReardenLLC domain names under the ACPA and California’s unfair competition law, and Defendant RC moved for summary judgment regarding all fifteen ‘Rearden’ domain names claiming its acquisitions did not violate the ACPA.

Cybersquatting under the ACPA;

Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), was passed by Congress in 1999 and is designed to defend against cybersquatting. Judge Patel painted a nice characterization of cybersquatting in the opinion as she noted;

“Cybersquatting is the Internet version of an unlawful land grab. Cybersquatters register well-known brand names as Internet domain names in order to force the rightful owners of the marks to come forward and pay for the right to engage in electronic commerce under their own name.” Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002).

The ACPA protects both federal registered trademarks and common law marks (established through use). Violations of the ACPA arise where a person uses a trademark owned by a third party and that person;

(A) has a bad faith intent to profit from that mark, and
(B) registers, traffics in, or uses a domain name [that is confusingly similar to another's mark or dilutes another's famous mark].

In order to prevail on a claim under the ACPA, a valid trademark owner must establish that;

(1) it has a valid trademark entitled to protection;
(2) its mark is distinctive or famous;
(3) the defendant’s domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owner’s mark; and
(4) the defendant used, registered, or trafficked in the domain name…
(5) with a bad faith intent to profit.” Bosley Medical Inst., Inc. v. Kremer, 403 F.3d 672, 681 (9th Cir. 2005)

(Prongs (1) and (5) were at issue but (1) was quickly resolved in favor of Plaintiff Rearden)

Bad Faith v. Good Faith (prong 5);

Judge Patel enumerated a number of factors in regards to whether RC used, registered, or trafficked in the domain name with a bad faith intent to profit.

As noted earlier, RC didn’t register ReardenLLC.com and ReardenLLC.net until after its offer to purchase Rearden.com from Plaintiff Rearden was rejected and Rearden put RC on notice that it may contest RC’s federal trademark registration of ‘REARDEN COMMERCE’.

In spite of this (remember that RC is not a LLC and has no plans to become one), Judge Patel, examining the facts according to a summary judgment standard, found that RC’s conduct conclusively demonstrates good faith.

In reaching this good-faith determination, Judge Patel pointed to a number of factors. She asserted that a jury could reasonably find that RC had not earlier considered ReardenLLC domain names during its ‘initial registration frenzy’ and instead registered them when it became aware of them as part of its program to connect with customers (and that this does not constitute bad faith). Also, Patel stated that RC’s immediate cessation of use of the ReardenLLC domain names when the alleged cybersquatting activity was brought to RC’s attention demonstrates good faith. Finally and conclusively in support of RC’s conduct in registering the ReardenLLC domains in good faith, Patel stated that, “RC’s recent offer to unconditionally transfer the ReardenLLC domain names to Rearden conclusively demonstrates RC’s good faith.”

After finding that Rearden was unable to satisfy the (5) prong to succeed on a claim brought under the ACPA, Patel awarded summary judgment in favor of RC with respect to the ReardenLLC domain names and then expanded this ruling to apply to all of the RC’s registered domain names at issue in this suit.

Unfair Competition;

California’s Unfair Competition Law defines unfair competition as “any unlawful, unfair or fraudulent business act or practice.” Cal. Bus. & Prof. Code § 17200

Plaintiffs’ arguments regarding the unlawful prong of the UCL are identical to their cybersquatting arguments; thus, for the reasons stated above, summary judgment on this prong is granted in favor of defendant.

Conclusion;

Judge Patel ruled that Plaintiff Rearden’s summary judgment motion is denied and Defendant’s summary judgment motion is granted;

“Here, plaintiffs have presented no evidence of harm, save their argument that the cybersquatting “likely impacted Rearden LLC’s ability to connect with potential clients, investors, members of the media, and jobseekers.” Docket No. 276 (Reply) at 11:11-17. Pure argument, with no supporting evidence, is insufficient to meet the summary judgment standard. Moreover, in light of the court’s prior ruling that there does not exist a strong likelihood of confusion, it is unclear how this misdirection was “unfair.” Indeed, it is unclear whether plaintiffs suffered any harm whatsoever from RC’s actions. Consequently, summary judgment on this prong is granted in favor of defendant.”

For related articles on good faith and cybersquatting under the ACPA;

UDRP Panel Recognizes that where a Registrant Reasonably Believed that what He was Doing was Legitimate, then Registrant’s Domain Name Registration Cannot be in Bad Faith

Bad News for Google, Facing Typo-squatting Lawsuit After its Motion for Summary Judgment was Denied

California District Court Finds in Favor of Intel Corporation, Denying ANIPs Motion to Dismiss in Trademark Infringement and Cybersquatting Lawsuit Brought to Protect the Intel Trademark

The 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; throwrocks@keitholbermann.com, WorstPersonInTheWorldLives@keitholbermann.com, and IFoundMyBlueDress@keitholbermann.com.

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.

As he’s indicated, Tucker Carlson believes he can hold onto and has plans for his ideally named domain name for providing Keith Olbermann commentary and criticism. However, there is no new original content as-of-yet; Carlson’s recently purchased www.keitholbermann.com remains a mirror-site of www.dailycaller.com. 

Perhaps it has been a good move for the Daily Caller to hold off on generating original content for keitholbermann.com. The Daily Caller’s conduct could possibly be in violation of federal laws;

In an article posted yesterday on NYMag.com, Dan Amira provided commentary on the Daily Caller’s acquisition of keitholbermann.com from an interview with intellectual property rights attorney Enrico Schaefer, founder of Traverse Legal, PLC. Enrico Schaefer said that the Daily Caller may be in violation of trademark infringement and anti-cybersquatting laws. The bulk of the exchange (Amira’s entire article can be found here, The Daily Caller May Regret Buying That Keith Olbermann Site) has been re-produced below;

“There’s always room for some debate on this kind of stuff,” Schaefer told us. “But the reality is that Keith Olbermann has got strong trademark rights in his name — a show called Countdown With Keith Olbermann, with his name used as a brand — and therefore anyone that registers a domain name in bad faith, or a personal name of a famous individual who has trademark right, is potentially liable for up to $100,000 in damages, plus attorney fees.”

“But wait a second,” we ignorantly inquired, “What about, you know, freedom of speech? Doesn’t the First Amendment allow us to criticize public figures however we damn well please?” Not always. Some “gripe sites,” as they’re known, are okay, if they “have no financial stake, no positive benefit that they receive. They just have something to say and they’re going to say it,” Schaefer explains. But “the moment that you start to make money or derive a benefit for your business, you lose a whole layer of First Amendment protection.”

“So what’s Olbermann’s next move? Schaefer says he has three options of varying intensity. On the lower end of the spectrum, he can send the Daily Caller a cease-and-desist letter, giving it five days to hand over control of the website and possibly pay him damages. The middle ground would be forcing it into binding arbitration, which the Daily Caller would have to comply with under the Uniform Domain-Name Dispute-Resolution Policy, which applies to anyone in the world who registers a domain name. Or he could sue the Daily Caller in federal court under the Anticybersquatting Consumer Protection Act. “I think the Daily Caller would likely lose this across the board,” Schaefer predicts.”

Not that he has much sympathy for Olbermann. “People who don’t register their domain name and the variations of their name, they’re just asking for it,” he says, incredulously. “The concept that someone as famous as Keith Olbermann could have gotten this far in life without registering KeithOlbermann.com is shocking.”

More information on the Keith Olbermann and Daily Caller dispute and related articles on political cybersquatting can be found here;

The Daily Caller acquires KeithOlbermann.com

Keith Olbermann Gets Lunch Handed to Him by The Daily Caller

Representative Pete Hoekstra, Victim of a Cybersquatter?

Novo Nordisk had registered the FlexTouch trademark with the commercial goal of advertising the FlexTouch product as an aid in pharmaceutical preparations for the treatment of diabetes.

On March 19, 2010 the lone panelist Brigitte Joppich writing for the WIPO Arbitration and Mediation Center  in the WIPO case of Novo Nordisk A/S v. Andrew Melcher, Case No. D2010-0095, rendered an Administrative Panel Decision. That full decision can be found here.

The Panel found that while complainant Novo Nordisk;

“Neither provided any evidence that it promoted its FLEXTOUCH product in any way nor listed any other circumstances supporting the assumption that the Respondent must have been aware of the Complainant and its rights in the term “flextouch” at the time of the registration of the disputed domain name.”

In contrast, the Panel looked favorably upon Andrew Melcher and noted that;

“The Respondent, in turn, provided evidence of substantial third parties’ use of the terms “flex touch” and “flexible touch” in connection with various products. As far as this Panel is aware, he has not been found to infringe the Policy in an earlier proceeding.”

If you are faced with a cybersquatting case under the UDRP or the ACPA, you should contact an internet attorney specializing in cybersquatting.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.

For more information and related articles;

Cybersquatting-saramortazavi.blogspot.com- Healthcare company loses arbitration for domain name,

Domainnamewire.com- Novo Nordisk Loses Domain Name Dispute

Neon Network then filed a declaratory judgment action in Arizona asking the court to determine that it had not violated the Anticybersquatting Consumer Protection Act.  The judge issued a default judgment against Aspis and awarded Neon $1,547.  The judgment can be viewed here, courtesy of Domain Name Wire.