Domain name disputes have been a core practice area of the firm for over fifteen years, during which time we have represented clients in a wide variety of cybersquatting lawsuits and arbitrations. We thrive on the “difficult to win” cases, but also routinely use cybersquatting laws when managing our clients overall trademark portfolios.
“Cybersquatting” involves inserting another’s trademark into a domain name in bad faith.
Kronenberger Rosenfeld handles all forms of domain name disputes, including cybersquatting, “typo-squatting” and other domain-based trademark infringement. Our anti-cybersquatting lawyers also handle domain name theft (aka domain hijacking) and domain transfer fraud matters. Kronenberger Rosenfeld is a leader in domain name litigation, creating new Ninth Circuit law concerning the ability to seize domain names as property.
Litigating and arbitrating domain name disputes has been at the core of our practice for over 15 years.
There are two primary options if a third party has registered a domain name with your trademark, business name, or personal name.
ICANN'S UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP)
The first option is to file a complaint with the Internet Corporation for Assigned Names and Numbers (ICANN) under its UDRP arbitration procedures and request that the domain be transferred to you. When a domain name is registered, the individual or business registering the domain name submits to mandatory arbitration in the event of a future dispute. UDRP arbitrations are substantially cheaper than federal litigation. Another advantage of UDRP arbitrations is that results can be obtained more quickly than in litigation (sometimes in 60 days). Kronenberger Rosenfeld handles many UDRP arbitration cases on a fixed fee basis. Click here for more on our experience with UDRP arbitrations.
ANTICYBERSQUATTING CONSUMER PROTECTION ACT (ACPA)
The federal ACPA is a second option for trademark owners. Under the ACPA, trademark owners can seek not only transfer of the disputed domain but also monetary damages. Our firm has filed many lawsuits in federal court under this statute, including cybersquatting in rem cases filed against the domain name itself when there was no jurisdiction over the international domain name registrant.
NO FEDERAL TRADEMARK REGISTRATION, BUT STILL A VICTIM?
If you feel that someone has registered a domain name (containing, say, your business or product name) and is competing against you unfairly, you may be able to assert your “common law trademark rights,” even though you have not registered your trademark with the federal government. Common law trademarks have been the basis for both UDRP arbitration complaints and complaints under the federal ACPA.
- Seized a domain name portfolio from a notorious cybersquatter and judgment debtor, auctioned the domain name portfolio for $302,000, and in the process created new Ninth Circuit law concerning the ability to seize domain names as property.
- Represented a cloud computing and file sharing company backed by more than $600 million in venture financing in a lawsuit where the firm successfully obtained for the client the domain name containing the client’s primary trademark.
- Represented the estate of the Academy Award winner and acclaimed artist Anthony Quinn (Zorba the Greek, Lawrence of Arabia) in an UDRP domain name arbitration where the firm secured the transfer of anthonyquinn.com to our client.
- Represented an online travel agent against a web development company, which had hijacked travel agent’s domain names and diverted agent’s online revenue. Obtained six-figure judgment in favor of the client. The firm enforced the judgment by seizing multiple domain names that had been monetized by the web development company through the appointment of a post-judgment receiver.
- Represented top online retailer of ink and toner products in more than 20 UDRP domain name arbitrations.
- Represented a major MMO game company in a dispute involving a domain name containing an exact version of its primary trademark, resulting in the client eventually obtaining the domain name.
- Represented online marketplace of high-end furniture and artwork in a dispute over a domain name that a third party owned containing our client’s primary trademark.
- Defended website developer against claims of copyright infringement and brought counterclaims against the plaintiff for cybersquatting. Prevailed on all claims and counterclaims on behalf of the defendant-client during a five day jury trial, and received an award of statutory damages under the Anti-Cybersquatting Consumer Protection Act along with attorneys’ fees.
- Represented car rental business in cybersquatting claim against competitor that had registered confusingly similar domain name to divert client’s Internet traffic.
- Represented true owner of domain name against an anonymous party who had hacked into our client’s domain registry account and stole a valuable domain name. Our firm prevailed on our claim for conversion of the domain name and obtained a court order requiring the registrar to transfer the domain name back to our client. The court’s decision reinforced the jurisprudence that domain names constitute property subject to common law conversion.
- Defended an Internet advertiser client against a Southern home improvement company in a case concerning state and federal unfair competition claims. Resolved the case early through favorable settlement that required no monetary payment from client.
- Defended a lead generation company in cybersquatting suit brought by its customer. Defeated the plaintiff’s request for prohibitive and one-sided preliminary injunction. Resolved case through settlement that repaired the parties’ fractured business relationship.