Protecting Your Brand Against Cybersquatting: How Your Company Can Fight Back
Since the Internet Corporation for Assigned Names and Numbers (ICANN) began issuing new generic top level domains (gTLDs), such as .xyz, .club, .top and hundreds of others, the potential for cybersquatting has increased significantly.
With the current cutthroat backdrop, it is critical for businesses to maximize all the means to secure and protect their brands online against cybersquatting and other threats. The Anticybersquatting Consumer Protection Act (ACPA) defines cybersquatting as “registering, trafficking in or using an Internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.”
Although there is no guaranteed way to protect brands online, a company can safeguard its business name by registering it as a trademark or through a defensive registration which allows the company to block its trademark across a specific TLD set.
It’s imperative that industries react quickly to minimize the damage that cybersquatting can cause. Fortunately, companies have a choice of legal regimes in combatting cybersquatters and seeking remedies for infringement. These include the ACPA, the Uniform Domain Name Dispute Resolution Policy (UDRP), the Uniform Rapid Suspension (URS) System and the Trademark Post Delegation Dispute Resolution Procedure (PDDRP). While these legal options have similar objectives, they are constructed differently and offer their own advantages and disadvantages. Trademark owners should have an informed understanding of these ADR procedures to be able to choose appropriately.
In a two-hour LIVE Webcast, a panel of thought leaders and practitioners assembled by The Knowledge Group will discuss the latest and most significant issues regarding cybersquatting. Speakers will also offer best practices in developing and implementing an effective brand protection policy.
Key topics include:
- Cybersquatting overview – introductory and background, history and where things stand now
- Prevention is the King
- Obtaining Trademark Registrations
- Protecting Domain Names as Trademarks
- Monitoring issues
- ACPA: in rem vs. in personam jurisdiction
- Choice of forum in ACPA cases
- Elements of ACPA claims
- Available remedies in ACPA cases
- Key cases on bad faith under ACPA
- The New Generic Top Level Domain Names (“gTLDs”)
- Marketing issues
- Impact on defensive blocking strategies
- The Trademark Clearinghouse
- Prevention is King: it is imperative to protect your brand before problems arise by means of:
- Federal and/or International trademark registrations
- Defensive domain name registrations
- Selective purchase of domain names registered by “domainers” when circumstances justify it
- Monitoring for infringements
- The Uniform Domain Name Dispute Resolution Policy (UDRP)
- Substantive issues
- Identical or confusing similarity
- Lack of rights or legitimate interests
- Registration and use in bad faith
- How to choose a UDRP dispute provider
- Current statistics
- Current challenges
- Consolidation of complainants or respondents
- Privacy and proxy services
- Role of the top-level domain
- Substantive issues
- The Uniform Rapid Suspension System (URS)
- Compare and contrast with UDRP
- ccTLD Dispute Policies for Country-Code Top Level Domains
Doug Isenberg, Founder
- Cyber Squatting overview – introductory and background, history and where things stand now
David Ludwig, Partner
Dunlap Bennett & Ludwig PLLC
- Acquiring a U.S. Trademark Registration is the most important thing a brand owner can do to prevent and combat cybersquatting.
- In order for a domain name to be protected, it must consist of or incorporate a trademarked name.
- Rather than waiting for cybersquatting to occur and litigating to get the domain name back, a robust trademark portfolio and defensive domain name registrations can help avoid a problem before it arises.
- Actively monitoring domain name expirations and registrations, new TLDs, and trademark filings can flag potential issues early.
- Objecting to infringing uses of domain names early and unequivocally is important in preserving a brand owner’s rights and avoiding a laches defense.
John McKeown, Counsel
Goldman Sloan Nash & Haber LLP
- A significant portion of the registrations for new gTLDs are owned by applicants located in China or applicants who have used proxy services and whose name and particulars are not known. This raises concerns with respect to the potential for increased cybersquatting activities.
- Brand owners have to carefully consider how to deal with the new gTLDs including monitoring the status of relevant new gTLDs.
- Registering domain names in all of the gTLDs as a defensive strategy is not practical and a brand owner must take a hard look at what each of the new gTLDs has to offer for the brand, directly and indirectly.
- Brand owners must monitor potential brand abuse. Obtaining a domain name watch or assessment report of the brand across all gTLDs, new gTLDs and country-code TLDs and using the Trademark Clearinghouse and Domain Protected Marks Lists need to be considered.
James C. Donnelly Jr., Partner
Mirick O’Connell DeMallie & Lougee LLP
- The ACPA provides much more powerful remedies than dispute resolution procedures such as UDRP. ACPA remedies include injunctive relief, compensatory damages (which may include the victim’s loss and the infringer’s profits), statutory damages of $1,000 to $100,000 per violation and awards of litigation costs including attorney’s fees in “exceptional cases.” The ACPA also provides the remedies that are available in dispute resolution procedures, such as cancelling or transferring the domain name.
- In addition, ACPA litigation provides discovery tools that are not available under dispute resolution procedures. ACPA discovery includes the right to interrogate witnesses, the power to subpoena third parties to produce testimony and documents, and the right to require the cybersquatter to produce documents and tangible evidence. Discovery can be used to explore the cybersquatter’s business strategy, motives and profits, among other issues.
- ACPA claims can be pursued concurrently with proceedings under the UDRP or any other dispute resolution procedure. In concurrent proceedings, the ACPA decision represents “the last word.” A favorable decision under the ACPA completely supersedes an unfavorable decision under any other dispute resolution procedure.
- In order to establish liability under the ACPA, the plaintiff must prove that the defendant registered, trafficked in or used a domain name that is confusingly similar to the plaintiff’s trademark, that the trademark was distinctive or famous at the time of the infringement and that the defendant acted with bad faith intent to profit from the plaintiff’s mark. A registered trademark will prove that the trademark was distinctive.
- The most powerful remedies of the ACPA (i.e., injunctions, compensatory damages, statutory damages and attorney’s fees) are available only if the plaintiff can establish “in personam” jurisdiction over the cybersquatter. Even if the cybersquatter is located outside the U.S., in personam jurisdiction can usually be established by showing that the cybersquatter purposefully committed acts that caused injury in the jurisdiction where plaintiff brings the ACPA lawsuit.
- If it is not possible to establish in personam jurisdiction over the cybersquatter, the ACPA permits the plaintiff to rely on in rem jurisdiction over the domain name by bringing an action to cancel or transfer the domain name in the jurisdiction were the domain name registrar is located but the in rem remedies do not include injunctions, damages or litigation costs.
- The disadvantage of ACPA litigation is that it typically takes longer and is more expensive than a proceeding under UDRP or other dispute resolution procedures. However, it can be an attractive alternative in cases where there is a prospect of proving and recovering substantial monetary damages, where discovery tools will make an important difference, or where the UDRP did not produce a satisfactory result.
Doug Isenberg, Founder
- Considering a Domain Name Dispute
- The UDRP
- The CDRP
- The URS
- The Trademark Post Delegation Dispute Resolution Procedure (“PDDRP”)
- What is the UDRP?
- What is the URS?
- Compare and contrast the UDRP v. URS (and when to use each)
- Domain name dispute trends
- How to choose a UDRP dispute provider
- The new role of the top-level domain in disputes
- Limitations of the URS
Who Should Attend:
- IT Lawyers
- IP and Copyright Attorneys & Consultants
- Trademark Lawyers
- Licensing Executives
- IT Officers
- Chief Information Officers
- Web Developers
- System Administrators
- Technology Firms and Others
- Public and Private Companies
- Other Interested/Related Professionals
Doug Isenberg, an attorney and founder of The GigaLaw Firm, has been helping clients protect themselves against cybersquatters and other bad actors on the Internet for 20 years. The World Trademark Review has said that he is “a whiz on all things to do with Internet law and domain names”; and the Atlanta Business Chronicle has called him an “international authority on Internet law.”
Isenberg, author of The GigaLaw Guide to Internet Law (Random House, 2002), represents some of the world’s largest and best-known brands with respect to their Internet legal matters – including the largest complaint ever filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), which resulted in an order transferring 1,519 domain names to a single client. He also serves as a domain name panelist for four of the world’s leading dispute providers, including the World Intellectual Property Organization (WIPO) and the National Arbitration Forum, where he has written more than 200 domain name dispute decisions.
Doug Isenberg, an attorney and founder of The GigaLaw Firm, has been helping clients protect themselves against cybersquatters and other …
James C. Donnelly Jr., Esq. is a partner at Mirick O’Connell DeMallie & Lougee LLP with 42 years’ experience representing business interests in a broad range of litigation and ADR, including IP cases, in state and federal courts at the trial and appellate levels in Massachusetts and other jurisdictions. He regularly co-chairs the Mass. Bar Association’s Annual In-House Counsel Conference and is the secretary of the Business Litigation Session Advisory Committee of the Massachusetts Superior Court. He has been selected for inclusion in The Best Lawyers In America© in the field of corporate governance, civil litigation and appellate litigation and since 2009 and has been named a “Super Lawyer” for Massachusetts and New England by Boston Magazine and Law & Politics. Prior to joining Mirick O’Connell in 1984, he was a partner at Hale and Dorr. In addition to work for clients he is President of the Higgins Armory Museum, a Trustee of the Worcester Art Museum and Treasurer of the American Antiquarian Society.
James C. Donnelly Jr., Esq. is a partner at Mirick O’Connell DeMallie & Lougee LLP with 42 years’ experience representing …
John focuses on providing advocacy and advice concerning intellectual property and related matters, including protecting trademarks, copyrights, patents, confidential information and misleading advertising claims under the Competition Act. He is certified by the Law Society of Upper Canada as a specialist in Intellectual Property Law (TradeMarks/Copyright). He is currently the Chair of the Canadian Bar Association Trademarks Committee.
John is recognized as a leading trademark practitioner in Canada and globally in Best Lawyers in Canada and World Trademark Review.
John is the author of two textbooks dealing with trademarks, Brand Management in Canadian Law (Carswell 1st Edition, 2004; 2nd Edition, 2006; 3rd Edition, 2010 and a 4th Edition will be published in the near future) and Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs. (Oxford, 1st Edition, 2010, LexisNexis 2013 Edition, 2014 Edition and 2015 Edition).
John is also the author of Fox, Canadian Law of Copyright and Industrial Designs (3rd Edition, 2000; 4th Edition, 2003), the leading copyright textbook in Canada. The 4th edition has been released in a loose leaf format. John and the text have been referred to by both the Supreme Court of Canada and the Federal Court of Appeal as an authoritative source.
John focuses on providing advocacy and advice concerning intellectual property and related matters, including protecting trademarks, copyrights, patents, confidential information …
David Ludwig is a partner at Dunlap Bennett & Ludwig where he focuses on intellectual property litigation, e-commerce law, and government contracts. He is co-chair of the firm’s litigation group, supervising numerous attorneys, and he has served as counsel for local and national clients in federal and state court litigation and arbitration matters, TTAB disputes, domain name disputes, government contract bid protests and Tucker Act litigation, in addition to other forums and proceedings. For example, David has represented manufacturing companies in complex patent infringement matters, technology companies in trademark infringement matters, copyright holders in infringement actions against the likes of Disney and ABC, entrepreneurs in domain name disputes, and government contractors in bid protests and contract disputes. In addition to authoring and presenting numerous CLE courses, David is an adjunct professor at The George Washington University Law School on intellectual property topics. He also holds an “AV Preeminent” rating from Martindale-Hubbell’s peer review ratings.
David Ludwig is a partner at Dunlap Bennett & Ludwig where he focuses on intellectual property litigation, e-commerce law, and …
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The GigaLaw Firm, founded by attorney Doug Isenberg, helps companies of all sizes protect their brands online – against cybersquatters, counterfeiters, copyright infringers and other bad actors on the Internet who use trademarks and content for their own advantage without permission.
The GigaLaw Firm’s services include representation with respect to domain name disputes (including under the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension System (URS), as well as numerous ccTLD policies); copyright infringement (including protection and enforcement under the Digital Millennium Copyright Act (DMCA)); domain name transactions (including a track record of successful seven-figure sales and purchases); and contracts and licenses (including safeguarding businesses by ensuring that their content is adequately protected and monetized).
About Mirick O’Connell DeMallie & Lougee LLP
Founded in 1916, Mirick O’Connell is a full-service law firm with 65 attorneys. The firm services businesses and individuals from its offices in Worcester, Westborough and Boston, Massachusetts. Mirick O’Connell’s principle practices include Business Law; Construction Law; Creditors’ Rights, Bankruptcy and Reorganization; Elder Law; Family Law and Divorce; Health Law; Intellectual Property; Labor, Employment and Employee Benefits; Land Use and Environmental Law; Litigation; Personal Injury; Public and Municipal Law; and Trusts and Estates. To learn more about the firm, visit www.mirickoconnell.com .
About Goldman Sloan Nash & Haber LLP
For more than 35 years, Goldman Sloan Nash & Haber (GSNH) LLP has helped leading businesses, entrepreneurs and individuals successfully navigate the maze of corporate & commercial law to help protect and grow their businesses. Our mid-sized law firm is based in downtown Toronto, Ontario, Canada and provides advice across all major practice areas including Intellectual Property. As a mid-sized law firm, we are committed to providing the personalized service of a boutique law firm with the sophistication of a larger law firm.
About Dunlap Bennett & Ludwig PLLC
Founded by two former Army officers in 2001, Dunlap Bennett & Ludwig is a veteran owned law firm handling a wide range of business matters including trademark and patent litigation, business disputes, government contracts, U.S. and international patents, trademarks, and copyrights for clients that include small and medium-sized established businesses and start-ups, Fortune 500 companies, and sovereign governments. Our attorneys come from diverse backgrounds and combine decades of experience to serve our clients and defend their interests with flexible solutions and fees. With extensive state, federal, and appellate level trial experience, including both state and US Supreme Court appeals, Post Grant Review and Trademark Trial and Appeal Board, and Federal Circuit experience, DBL is a firm you can trust to successfully go the distance in the largest and most complex cases at the best rates in the industry. The firm has been named a "Best Law Firm in Virginia" by Virginia Living and the PCT Global Law 2013-2016 Intellectual Property Firm.