In How to Defeat a Cybersquatter, I wrote about using ICANN’s comparatively quick and inexpensive Uniform Domain Name Dispute Resolution Policy (UDRP) to defeat cybersquatters. The domain name NewtGingrich.com recently was squatted upon – but I doubt that Newt will be able to use the UDRP successfully to recover that domain.
Gingrich Communications had owned NewtGingrich.com since 2004, but apparently forgot to renew the domain name in August 2011. By December 2011, it was owned by American Bridge 21st Century, a progressive Political Action Committee. (In the interim, it was owned by entities in Chihuahua, Mexico.)
In How the UDRP can Defeat a Cybersquatter, I wrote about ICANN’s Uniform Domain Name Dispute Resolution Policy. The UDRP provides a quick, inexpensive way to recover a domain name from a cybersquatter (someone who has obtained a domain name that is the same as, or confusingly similar to, a trademark or service mark that you own). However, if you want to recover money, you will have to go to court.
Before proceeding further, let me be clear: I think lawsuits should be avoided whenever possible. As a trial lawyer told me many years ago, “Litigation is a terrible way to run a business.” Unfortunately, litigation sometimes is necessary.
Just over a year ago (Who is the Master of Your Domain? [or, How to Prevent Domain Name Hijacking]), I wrote about recovering a client’s domain name from a disgruntled former employee via ICANN’s Uniform Domain-Name Dispute-Resolution Policy. A recent case from the U.S. Court of Appeals for the Ninth Circuit (DSPT International v. Nahum) shows that under federal trademark law, an aggrieved domain name owner may be able to recover monetary damages, too.
Defendant Lucky Nahum worked for plaintiff DSPT International and worked with an outside supplier to set up DSPT’s website. Without telling DSPT’s owner, Nahum registered the website’s domain name in his own name.
Office Depot won a judgment against John Zuccarini under the Anticybersquatting Consumer Protection Act of 1999 (15 U.S.C. Section 1125(d)) based on Zuccarini’s bad-faith registration of the domain name <offic-depot.com>, which was confusingly similar to <officedepot.com>.
Office Depot was unable to collect on its monetary judgment against Zuccarini, so it assigned that judgment to DS Holdings (“DSH”). DSH sought to levy against 190 <.com> domain names owned by Zuccarini and for which VeriSign controls the registry (a receiver having been assigned to auction off the domain names). Zuccarini (representing himself!) argued that DSH should be required to levy upon the domain names where their respective registrars are located, rather than at VeriSign’s single location. (more…)
Cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from a trademark belonging to someone else. NBA superstar Chris Bosh recently won a major victory against a serial cybersquatter.
On September 24, the U.S. District Court for the Central District of California granted an order requiring that Luis Zavala transfer all of his domain name holdings to Bosh. (A list of those holdings is available on this blog’s Downloads page as “Chris Bosh – Domain Names Awarded”.) This award is particularly significant because it is, to the best of my knowledge, the first time that a party has been awarded domain names that profit from third parties’ trademarks. (more…)
Facebook recently began allowing users to name the URLs for their pages. For example, my Facebook page is at www.facebook.com/danashultz. The option to choose a URL appears as soon as the user logs in.
(Not surprisingly, Facebook’s servers appear to be overworked at this time. The first two times I tried to reserve my URL, I was hung up on a “Loading….” message. The third time worked.)
It is easy to anticipate, however, that trademark infringement and cybersquatting will run rampant. If you believe that another Facebook user has chosen a URL that infringes upon your trademark, you can report an infringement of your rights.
Check out all posts about cybersquatting.
Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.