Posts Tagged ‘UDRP’

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 »

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 »

Typosquatting and Cybersquatting Dispute Over ROK Trademark Owner and Maker of Boat Stands

Friday, July 30th, 2010

Two companies located in Massachusetts have been in competition with each other over designing, building, and selling boat stands. Recently however, that dispute spilled over into the intellectual property arena.

typosquatting and cybersquatting domain names disputeOriginally the Mattapoisett, MA, located Kavanaugh-Brownell Boat Stands, LLC (Kavanaugh) sued the Fairhaven, MA, located Brownell Trailers, LLC (BT) over use of the ‘BROWNELL’ trademark. In that first suit Judge Young presiding over the case determined that BT could continue to sell its boat stands under the ROK trademark so long as the mark made it clear to consumers that the products for sale were boat stands. BT then adopted the above ‘ROK’ trademark which was approved by Judge Young. In conjunction with adoption of the ROK mark, BT also registered and began use of www.rokboatstands.com.

Continue reading Typosquatting and Cybersquatting Dispute Over ROK Trademark Owner and Maker of Boat Stands »

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.

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

Healthcare Giant Novo Nordisk Loses its UDRP Challenge to FlexTouch.com

Monday, June 14th, 2010

Novo Nordisk is a giant in the Healthcare industry that has registered the FlexTouch trademark but before it could begin to use FlexTouch in conjunction with commercial purposes, Andrew Melcher of La Jolla, California, registered FlexTouch.com and began using it as a parking page supporting links to electronics and computers.

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.trademark law

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.

Continue reading Healthcare Giant Novo Nordisk Loses its UDRP Challenge to FlexTouch.com »

Famous Piano Maker ‘Steinway’ Loses Cybersquatting Case Against Alleged Cybersquatter

Monday, June 7th, 2010

cybersquatting caseIn news posted on June 2nd, the famous maker of pianos, Steinway, lost a cybersquatting case over control of the website www.american-steinway.com.

The case of Steinway, Inc. v. Carey Simon, is very shortly and aptly summarized at Cybersquatting.com;

“Steinway, Inc. the acclaimed manufacturer of pianos, recently lost a cybersquatting action to recover the domain name www.american-steinway.com, While the cybersquatting panel found that Steinway had a federal trademark registration for the STEINWAY way, the panel also found that the registrant of the domain name had been in the business of buying, restoring, and selling Steinway pianos for several years, and had used the domain name in its nominative sense. Therefore the panel found that the registrant had rights in the STEINWAY mark and did not use the domain name in bad faith. Thus, the panel denied Steinway’s claim.” Continue reading Famous Piano Maker ‘Steinway’ Loses Cybersquatting Case Against Alleged Cybersquatter »

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

Friday, May 28th, 2010

An article entitled, Finally, a UDRP Panel Respects the Scope of the Policy, by Andrew Allemann over at Domain Name Wire, highlighted a recent ruling by the UDRP Panel, where the Panel exercised discretion in elaborating on the scope of its definition of cybersquatting.

The case is Human Resource Certification Institute v. Tridibesh Satpathy, and it is an example of a dwindling number of recent cases where an innocent domain name owner is allowed to retain his domain name even though it appears to infringe on a complainant’s service mark rights.

The Panel held in favor of Defendant and noted that;

“if the Respondent reasonably believed that what he was doing was legitimate, it cannot be said that his registration of the Domain Name was in bad faith.”

The Panel further elaborated on trademark law and cybersquatting;

“The Policy was designed to deal with a relatively narrow form of dispute between trade mark (and service mark) proprietors and domain name registrants, namely the deliberate registration of a domain name featuring the complainant’s trade mark or a confusingly similar variant of it with a view to causing damage or disruption to the complainant or his business or unfairly exploiting the complainant’s trade mark for the registrant’s own advantage.” Continue reading 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 »

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

Monday, October 5th, 2009

Traverse Legal’s internet attorneys are handling some of the largest Cybersquatting Cases ever filed – Contact us at 866.936.7447.  Our internet law lawyers can help you protect and defend your valuable domain names.

Internet law is complex because courts are not familiar with internet technology or the special laws passed by Congress to create special rights for companies doing business on the internet. Internet attorneys who specialize in internet law issues are critical in pursuing your legal rights.  For instance, domain names can be incredible assets for a business.  Like a well placed piece of commercial real estate, domain names can be the key to turning a dwindling business into a healthy and vibrant economic powerhouse.  A well thought out and developed domain name can increase sales, increase brand recognition, and extend a business’ reach across international borders.  Cybersquatting and cybersquatters seek to profit from the inherent value that domain names provide to trademark holders.  Cybersquatters and, more specifically, typosquatters will, for example, register domain names that are common misspellings or typographical errors of a business’ trademark to siphon off the web traffic and goodwill that a trademark owner has created in its brand and domain name.

Cybersquatting cases can be filed through two similar methods.  The first is the Uniform Domain Name Dispute Resolution Policy (UDRP).  The UDRP is a contract created by ICANN that every domain name registrant of a major top-level domain name (.com, .net, or .org) must agree to in order to register a domain name.  Under this contract, the registrant agrees to have disputes over the domain name, specifically disputes over the abusive registration of a domain name, decided by arbitration under the Policy.  These arbitration proceedings are typically brought in front of the National Arbitration Forum or the World Intellectual Property Organization.

The second method is the Anticybersquatting Consumer Protection Act (ACPA).  The ACPA allows a plaintiff to bring a cybersquatting case in federal court against a person that registers or uses a domain name in bad faith that is identical or confusingly similar to the trademark or the personal name of the plaintiff.  This remedy allows the plaintiff to seek statutory damages of up to $100,000 per domain name and attorneys fees in exceptional circumstances.  Additionally, a plaintiff can bring an in rem suit against foreign defendants to recover a domain name that was registered with a registrar or registered through a registry located on US soil, but monetary damages are not available in an in rem suit under the ACPA.

If you are faced with a cybersquatting case under the UDRP or the ACPA, contact one of our cybersquatting attorneys today.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.