Does Renewing a Domain Name Count as “Registering” a Domain Name Under the ACPA?

The U.S. Anticybersquatting Consumer Protection Act ("ACPA") is a federal law -- part of the Lanham Act that deals with trademarks and unfair competition. It says that a person can be liable if he or she registers a domain name that contains another's distinctive trademark with a bad faith intent to profit from that mark. One issue that has arisen over the years is whether registration that can give rise to liability means only the first time the domain name is registered, or whether it applies to the re-registration... more

ACPA Dilemma: Federal Court Denies Injunction in Landmark Case - Cybersquatting Loophole or Legal Oversight?

This case had a bit of a weird result -- even though the brand owner had a mark that was 20 years old, and the alleged cybersquatter, in the meantime, acquired a domain name on the open market identical to that mark, because the domain name was first registered (by an unrelated party) before the brand owner's trademark rights arose, there was no relief under federal trademark law. more

The Use of AI in the Domain Name Industry

Artificial intelligence has important uses in the domain name industry. With the use of AI, domain name registration, management, and valuation have been made more efficient and accurate. Here are some specific ways AI is affecting domain names... AI-powered domain name generators can suggest relevant and available domain names based on specific keywords, making the search process easier and faster. more

Court’s Analysis in ACPA Case Is Instructive on How to Plead Bad Faith Domain Name Registration

NameFind is a GoDaddy company that holds registrations of domain names and seeks to make money off of them by placing pay-per-click ads on parked pages found at the domain names. Global Licensing owns the DEJA VU trademark that is used in connection with strip clubs and other adult-related services. When NameFind used the domain name dejavushowgirls.com to set up a page of pay-per-click ads, Global Licensing sued, raising claims under the federal Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125(d). more

Recent Case in Federal Court Shows Inefficiencies of Anticybersquatting Consumer Protection Act

A recent case1 from a federal court in Kentucky shows why the Anticybersquatting Consumer Protection Act (15 U.S.C. 1125(d) - the "ACPA") can be - when compared to the Uniform Domain Name Dispute Resolution Policy ("UDRP") - a relatively inefficient way of resolving a domain name dispute. Here is a quick rundown of the facts. Defendant owned a business directly competitive to plaintiff ServPro. Plaintiff had used its mark and trade dress since the 1960's... more

Malware Detection Provider Gets Important Victory Allowing It to Flag Unwanted Driver Installer

Despite a recent Ninth Circuit decision denying immunity to malware detection software for targeting competitor's software, court holds that Section 230 protected Malwarebytes from liability for designating software driver program as potentially unwanted program. Plaintiff provided software that works in real-time in the background of the operating system to optimize processing and locate and install missing and outdated software drivers. more

How Companies Can Use the UDRP to Combat Rising COVID-19-Related Phishing

Straightforward out-of-court domain name proceeding can provide efficient relief against fraudulent websites and email. Google has seen a steep rise amid the Coronavirus pandemic in new websites set up to engage in phishing (i.e. fraudulent attempts to obtain sensitive information such as usernames, passwords and financial details). Companies in all industries - not just the financial sector - are at risk from this nefarious practice. But one relatively simple out-of-court proceeding may provide relief. more

Technology Vendors Must Be Proactive in Dealing With COVID-19 Problems

Early action now on possible performance issues will "flatten the curve" of customer problems in the coming weeks and months. Here are three things technology and software vendors can do right now to get ahead of problems that may appear (if they are not already) with services such as development, implementation and support... Check your contracts to see whether there are any "material assumptions" that have failed or will fail - perhaps because of some governmental action or unavailability of personnel... more

Coachella Unsuccessful in Domain Name Dispute, Failing to Prove Bad Faith Use and Registration

The Complainant is the owner of the well-known Coachella festival. It owns a trademark registration, issued in 2016, for the mark CHELLA. The Respondent asserted that he intended to use the disputed domain name to set up an online women's clothing store but never did so. He claimed that growing up, his nickname was "Chelle" and that he modified that name to make it sound more feminine for use in connection with the store. more

Respondent Had Rights or Legitimate Interests in Domain Name by Using It to Promote Genuine Business

In the case of Avon Products, Inc. v. Jenika Mukoro, Heirs Holdings, a 3-member WIPO Panel denied the Complainant's efforts to have the domain name avonhealthcare.com transferred because the Complainant failed to sustain its burden of establishing that the Respondent had no rights or legitimate interests in the disputed domain name. The Panel found that the Complainant proved that its trademark AVON (which has been in use since 1929) is well-known in the field of cosmetics... more

Court Finds Anti-Malware Provider Immune Under CDA for Calling Competitor’s Product Security Threat

Plaintiff anti-malware software provider sued defendant -- who also provides software that protects internet users from malware, adware etc. -- bringing claims for false advertising under the Section 43(a) of Lanham Act, as well as other business torts. Plaintiff claimed that defendant wrongfully revised its software's criteria to identify plaintiff's software as a security threat when, according to plaintiff, its software is "legitimate" and posed no threat to users' computers. more

Google Can, at Least for Now, Disregard Canadian Court Order Requiring Deindexing Worldwide

U.S. federal court issues preliminary injunction, holding that enforcement of Canadian order requiring Google to remove search results would run afoul of the Communications Decency Act... Canadian company Equustek prevailed in litigation in Canada against rival Datalink on claims relating to trade secret misappropriation and unfair competition. After the litigation, Equustek asked Google to remove Datalink search results worldwide. Google initially refused altogether... more

Reverse Domain Hijacking Where Complainant Knew but Did Not Disclose Geographic Significance of Mark

In the case of Oy Vallila Interior Ab v. Linkz Internet Services, a 3-member WIPO Panel denied the Complainant's efforts to have the disputed domain name vallila.com transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith. The Complainant is in the business of providing fabrics and interior design services and claimed trademark rights in its registered mark VALLILA in the European Union. more

Domain Name Case Under ACPA Failed Because Trademark Was Not Distinctive

The federal Anticybersquatting Consumer Protection Act (ACPA) [15 U.S.C. 1125(d)] is a provision in U.S. law that gives trademark owners a cause of action against one who has wrongfully registered a domain name. In general, the ACPA gives rights to owners of trademarks that are either distinctive or famous at the time the defendant registered the offending domain name. The Eleventh Circuit Court of Appeals recently affirmed the decision of a lower court that dismissed an ACPA claim... more

Domain Name Owner Gets Swift Relief Against Impostor Website

In rem actions over domain names are powerful tools. A trademark owner can undertake these actions when it identifies an infringing domain name but cannot locate the owner of that domain name. In a sense, the domain name itself is the defendant. The Anticybersquatting Consumer Protection Act (which is a part of the federal trademark statute dealing with the unauthorized registration of domain names) says that a court can enter ex parte orders requiring a domain name to be turned over when... more

Panel Allows Woman to Keep Domain Name That Is Her First Name

In this action under the usTLD Dispute Resolution Policy (which mirrors the Uniform Domain Name Dispute Resolution Policy), Complainant sought transfer of the Domain Name grazia.us. Complainant, an Italian company, has used the mark GRAZIA for many years in several markets around the world in connection with its fashion magazine. more

Reverse Domain Name Hijacking Found Where Complainant’s Rights Were of Narrow Geographic Scope

Complainant sells RV parts and accessories in the eastern part of Tennessee. Respondent, no stranger to UDRP proceedings, registers domain names and sets up pages with pay-per-click ads related to the subject of the words in the domain name. Though Complainant had been operating on the web since mid-2004, which is the same year it incorporated, it claimed that its predecessor in interest had been using the ADVENTURERV trademark since 1989. more

Trademark Holder Not Entitled to Domain Name Registered Years Before

Startups in the process of selecting a company or product name are often frustrated to see that someone else, years ago, registered the .com version of their newly thought-of name. Similarly, companies that have acquired a trademark registration wonder whether they can use their crisp new registration certificate to stomp out someone else who has been using a domain name similar to the company's new mark. A recent case arising under the UDRP shows us that the earlier domain name registration is usually going to be on solid ground against a later-arriving trademark owner. more

Email Snooping Can Be Intrusion Upon Seclusion

Analysis could also affect liability of enterprises using cloud computing technologies... Local elected official Steinbach had an email account that was issued by the municipality. Third party Hostway provided the technology for the account. Steinbach logged in to her Hostway webmail account and noticed eleven messages from constituents had been forwarded by someone else to her political rival. more

Cybersquatter Hit With Maximum Penalty

Defendant Shui registered the domain name citybank.org and established a site there promoting financial services, sometimes using the mark CITIBANK. The real Citibank, armed with its trademark registrations in over 200 countries and over 50 years of use of its CITIBANK mark, filed suit against Shui under the Anticybersquatting and Consumer Protection Act, 15 USC 1125(d) ("ACPA")... Citibank sought $100,000 -- the maximum amount of statutory damages available under the ACPA, plus payment of Citibank's attorneys' fees... more

What Could the RIAA’s Switch in Strategy Mean?

The Wall Street Journal and others are reporting that the Recording Industry Association of America is adjusting its strategy for combating the massive infringement occasioned by the sharing of music files over the internet. Since 2003, that strategy has been to pursue copyright infringement cases against individual file sharers. The RIAA now says it will focus less on pursuing infringement litigation and more on working with internet service providers to shut down the accounts of individuals suspected of illegally trading files. more

Disclaimer in Trademark Registration Sinks UDRP Action

A trademark owner who notices that someone else has registered a domain name incorporating the owner's mark can file an arbitration action under the Uniform Domain Name Dispute Resolution Policy (UDRP for short). This often serves as a quicker and less expensive alternative to pursuing the cybersquatter in court. To be successful under the UDRP, the "Complainant" has to show all of the following three elements... more

DMCA Reaches the Decade Mark

My friend Kevin Thompson over at Cyberlaw Central reminded me this morning in this post that President Clinton signed the Digital Millennium Copyright Act ten years ago today. Tempus fugit. It's interesting to reflect on how this critical piece of legislation has affected (I think fostered) the growth of the online infrastructure with its safe harbor provisions found at 17 U.S.C. 512. more

Temporary Restraining Order Issued Against Domainer’s Use of “mylennar.com”

Companies sometimes find that opportunistic purchasers of domain names (often referred to as "domainers"), will purchase a domain name quite similar to that of the company, and establish a site at the URL loaded with revenue-generating sponsored ads. To accomplish these purposes, domainers seem to prefer the services of companies like HitFarm and Domain Sponsor. A web user types in the confusingly similar URL and is bombarded with pop-up ads and sponsored links to goods and services, often competitive to the company whose name or trademark is being appropriated in the URL... more

Summary Judgment Denied in a Case of Creative Typosquatting

In the case of Lands' End, Inc. v. Remy, the defendant website owners were accused of crafting a clever scheme to get some extra commissions from their affiliate relationship with landsend.com. It looks like the scheme has backfired, however, as Lands' End's claim against the defendants under the Anticybersquatting Consumer Protection Act, [15 U.S.C. §1125(d)] ("ACPA") has survived a summary judgment motion and the case is heading for trial. more

In Rem Domain Name Proceeding: Sometimes “may” Means “must”

Investools, Inc. recently filed an in rem domain name proceeding against a Canadian entity that registered the domain names investtools.com and investtool.com. In rem domain name proceedings are provided for under the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. 1125(d), and are a handy way for a trademark owner to acquire a domain name from a cybersquatter when the cybersquatter can't be found e.g., is located outside the U.S. ...The ACPA requires that a plaintiff demonstrate four things to establish in rem jurisdiction over a domain name... more

Macabre Result Avoided in Mortician Domain Name Case

If a court won't let you use your own name, you might feel like you're a mere ghost of your former self. That happened to Ed Kalis of Broward County, Florida. In a recent case, Florida's court of appeal considered whether a trial court's order against Kalis, enjoining him from using his own last name in various means of advertising and in the URL for his company's website, was proper. The appellate court held that the injunction was overkill. more

WIPO Panel Splits on Descriptiveness of bocaresorts.com

An arbitration panel of the World Intellectual Property Organization has decided 2-1 in favor of Complainant Boca Raton Resort & Club in an action under the Uniform Domain Name Dispute Resolution Policy over the domain name bocaresorts.com. ...The Presiding Panelist, Dennis Foster, disagreed with the majority's conclusion, and issued a dissent that addressed the issue of bad faith. Foster asserted that the Respondent was "entitled to believe that the phrase 'Boca Resorts' is geographically descriptive and means resorts in the city of Boca Raton, Florida... more

When the Defendant is a Domain Name: The Power of In Rem Proceedings Under the ACPA

A recent decision by a federal court in Virginia illustrates some interesting legal issues that arise from the global nature of the domain name system. It also highlights a powerful mechanism under the Anticybersquatting Consumer Protection Act ("ACPA") by which a plaintiff can proceed with a legal action to recover a domain name without regard to the court's personal jurisdiction over the registrant.  more

Morgan Freeman Wins Transfer of morganfreeman.com from Cybersquatter

Perhaps Morgan Freeman never learned about the high profile domain name disputes involving celebrity names (e.g., Madonna, Bruce Springsteen and Julia Roberts), because he didn't register morganfreeman.com before it was snatched up by Mighty LLC in April 2003. After learning about Mighty LLC's (no stranger to domain name disputes) cybersquatting, Freeman filed a complaint before a WIPO arbitration panel under the Uniform Domain Name Dispute Resolution Policy... more

Wal-Mart on the Domain Name War Path

Wal-Mart seems to have been particularly vigilant lately about protecting itself from third parties setting up websites critiquing Wal-Mart and its practices. ...Wal-Mart recently scored a victory in an arbitration proceeding under the Uniform Domain Name Dispute Resolution Policy ("UDRP") before the World Intellectual Property Organization ("WIPO") against Jeff Milchen, a self-proclaimed critic of Wal-Mart from Bozeman, Montana who registered the domain name "walmartfacts.biz". more