Cybersquatting Law: Must Prove Bad Faith Intent To Profit

cybersquatting laws and lawyer
Judge declares cybersquatting laws case as “one of the bad ones.”

Judge Lewis Kaplan hammered his gavel on the cybersquatting scrum between programmer Jason Kneen and OfficeLinks.com executive Harsh Mehta. In tennis speak: “Advantage, Kneen.”

A Quick Background Summary of the Mehta v. Kneen Cybersquatting Laws Case

  • Kneen, a U.K.-based programmer, bought workbetter.com in 1999.
  • In the not too distant past, Harsh Mehta, an office sharing startup co-founder, bought workbetter.us to market his service.
  • In April 2014, Mehta approached Kneen about buying workbetter.com; he offered $500; Kneen ultimately refused and declined to sell his domain.
  • Sometime around the failed domain sale, Mehta initiated the USPTO trademark application process for “Work Better.”
  • Shortly after Mehta started the official process, according to Mehta, one of his “over-zealous” employees allegedly tried to get workbetter.com at the registration level. Twitter apologies were offered and accepted over the incident. At that point, most people assumed the workbetter.com domain battle was over.
  • But then Mehta filed a cybersquatting lawsuit against Kneen over the desired domain.

Tech industry pundits buzzed about this cybersquatting laws case (including yours truly) — probably because it was possible for people to appreciate both parties’ arguments.

Judge on Mehta v. Kneen Cybersquatting Lawsuit: “This is a really bad one.”

Unlike us in the peanut gallery, Judge Lewis Kaplan saw no ambiguity. “However you slice it, there are good cybersquatting cases and there are bad ones. And this is really one of the bad ones,” Kaplan stated in his ruling. He went on to explain his position:

The balance of hardships in my view, if it cuts in any direction cuts in favor of Mr. Kneen because an injunction could threaten to interfere with a perfectly lawful and appropriate course of business in which he’s been engaged since 1999, all at the behest of somebody who appears to have a — who quite obviously just went out and registered a mark that he undoubtedly knew was nearly identical to the domain name registered and used by the plaintiff for many years for perfectly legitimate reasons.

Plaintiff Didn’t Prove “Bad Faith Intent To Profit”

Mehta alegedly knew that Kneen owned workbetter.com but tried to register the mark anyway. For his part, Kneen had not – and at the time of this writing has not – violated any regulations in relation to the domain. As such, according to current U.S. intellectual property standards, in theory and praxis, Kneen isn’t doing anything wrong.

To put another way: if a URL is not being used to parasitically profit off another brand’s mark, owning a dormant URL is not necessarily a violation of trademark law.

If a URL is not being used to parasitically profit off another brand’s mark, owning a dormant URL is not necessarily a violation of trademark law.

To Win A Cybersquatting Lawsuit, Plaintiffs Must…

To win an online copyright or trademark lawsuit, plaintiffs typically must prove, at the very least, that the defendants:

  • Were using their marks – or ones confusingly similar;
  • Profited from the use of the contested marks; and
  • Acted in bad faith.

Owning A Domain For A Long Time Worked In Favor of The Defendant (This Time)

Since Kneen owned the URL long before Mehta had an interest in it, under sui generis circumstances, the judge ruled that Kneen did not act in bad faith by refusing to sell the domain. Moreover, in this case, the court reasoned that any future sale of the domain would fail to contravene Mehta’s trademark since Kneen bought it almost a decade before Office Space Solutions came into existence.

Speak With Someone Who Understands Cybersquatting Laws

Cybersquatting laws are nuanced. A top AV-rated Internet law firm, Kelly Warner attorneys are exceptionally well versed in domain disputes and other online intellectual property legalities. Our cybersquatting law attorneys:

  • Help clients secure, register and defend trademarks and copyrights – both online and off;
  • Settle domain disputes;
  • Work with clients on UDRP petitions;
  • Act as both plaintiff and defense counsel for intellectual property litigation; and
  • Conduct research for startups and established businesses.

Get in touch. We’ll do our best to change your mind about lawyers and help protect your intellectual property – online and off.

Cybersquatting Case Law: Warehousing Domains

cybersquatting cases
Cybersquatting Cases: OfficeLinks v. Kneen

Enterprising Programmer Buys Domain In The 1990s; Startup Wants It In 2014.

Sixteen years ago, a London-based programmer, Jason Kneen, purchased the domain workbetter.com.

Fast forward to 2014. According to reports, Kneen is contacted by Harsh Mehta, the entrepreneur behind OfficeLinks, who wants to buy workbetter.com. To promote his company, Mehta had already bought workbetter.us and was looking to obtain the higher-profile workbetter.com. The OfficeLinks co-founder offered Kneen $500, but for various reasons, the programmer ultimately turned down the deal.

After negotiations had fallen through, in April 2014, Mehta filed an intent-to-use trademark application for the phrase “Work Better.” Then, in June, Kneen caught wind that someone was trying to do a domain transfer on the URL. Turns out the would-be domain interloper was, as Mehta would later explain, one of his “over-zealous” employees. Whatever the case, at the time, Mehta and Kneen appeared to have “made up” on social media.

Startup Files Cybersquatting Lawsuit Over “Warehoused” Domains

But later in the same month, DomainNameWire contacted Kneen, which is allegedly how he found out about that OfficeLinks was suing him for cybersquatting in a New York Federal Court. According to reports, as a result of the lawsuit, Kneen’s domain name provider locked the URL during proceedings – presumably until the legal matter resolved.

In a public statement, Mehta explained his position thusly:

“This is a dispute between a company that is trying to protect its trademark, and make genuine use of it, and an ideology that entitles individuals (and businesses, including Jason Kneen’s) to hijack existing and prospective trademark registrations for $18/year.”

Interesting Case; Tough Call

This domain dispute is worth following for a couple of reasons.

  • Both parties are fairly well-known in the tech and startup communities.
  • It’s easy to see both parties’ points.

As John Biggs on Tech Crunch eloquently explains:

At this point, on July 3, the domain is still in limbo with Kneen refusing to sell and Mehta’s lawsuit hanging over Kneen. The unfortunate thing about the case is that both parties are Internet natives and, Mehta especially, part of the startup ecosystem. While cybersquatting situations are frustrating, this is not the case of someone trying to grab Sony.com in the early days of the Internet. Kneen decided he didn’t want to sell and Mehta, in short, is using the legal system to ensure an outcome beneficial to himself.

Got Questions About Cybersquatting Cases? Consult A Domain Dispute Lawyer.

Kelly Warner is an Internet law firm that has successfully handled dozens of domain disputes and cybersquatting lawsuits. A top AV-rated firm, our attorneys enjoy a high success rate. To read more about cybersquatting case studies, head here. To learn more about Kelly / Warner’s Internet law practice, click here. If you’re ready to schedule a consultation, please head here.

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Kelly Warner’s domain dispute lawyers have successfully handled all manners of cybersquatting cases. Our experience with these types of cases means we’re aware of all the proverbial trap doors and potential sink holes. We also understand how to best leverage the law on behalf of our clients’ interests.
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Cybersquatting Case Study: Academy of Motion Picture Arts and Sciences v. GoDaddy.com Inc.

cybersquatting case example
Did a court just make it easier to sue cybersquatters?

A U.S. court ruling paved the way for lawsuits against domain name registrars that offer “cash for parking” programs. The high-profile case, Academy of Motion Picture Arts and Sciences v. GoDaddy.com Inc., may have a profound effect on cybersquatting lawsuits from this point forward.

Background On The Oscar Cybersquatting Lawsuit

In 2013, the Academy of Motion Picture Arts and Sciences – or AMPAS (a.k.a., the people who give out Oscars) – filed a lawsuit against GoDaddy.com. The issue? AMPAS felt that GoDaddy – via its Paid Parking Program – was unfairly profiting off the Academy’s name.

Domain Marketer Bought Oscar-Related URLs

An enterprising domain marketer purchased several URLs that incorporated the “Oscar” trademark, including oscarliveblogging.com and Oscarlist.com. Instead of putting a website on the URLs, the marketer opted to take advantage of GoDaddy’s Cash Parking Program – a program that financially benefited both GoDaddy and the would-be cybersquatter.

As you may have already guessed, during Oscar season, the domain name entrepreneur made a cash killing via the ads that appeared on the sites.

AMPAS brass wasn’t impressed with someone profiting off its brand. So, the Academy decided to move forward with a cybersquatting lawsuit.

Violations of the Anticybersquatting Consumer protection Act

In 1995, U.S. Federal officials passed the Godfather of domain dispute laws. Entitled the Anticybersquatting Consumer Protection Act, the statute protects the domain names of trademark owners. Essentially, it illegalized the practice of buying another party’s trademarked domain with bad faith intent to profit. It’s the law that disallows you or me from, say, buying Nike.com and then holding it ransom for $1 billion (spoken in Dr. Evil’s voice, thank you very much!).

Why The Court Sided With AMPAS In The GoDaddy Cybersquatting Case

AMPAS’ lawsuit alleged that GoDaddy monetized 115 domains infringing on the Oscar trademark. After reviewing the facts of the case, the court rejected the registrar’s safe harbor defense because the law only shelters parties that don’t profit – in any way – from the infringing URL of a customer. Since GoDaddy made money off the cybersquatter via advertising, the safe harbor argument didn’t work.

Other Legal Remedies for Trademark Domain Disputes

Lawsuits aren’t the only remedy for domain disputes. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is an international ICANN program where trademark holders, with URL grievances, can petition to regain control of disputed domains. What is the drawback of UDRP rulings? They’re nonbinding.

In the event that a UDRP ruling does not land in petitioners’ favors, they can pursue lawsuits claiming violations of section 43(d) the Lanham Act (15 U.S.C. $ 1125(d)).

Speak with An Internet Trademark Attorney

Kelly / Warner Law helps hundreds of businesses and trademark holders with various types of domain disputes – from resolving cybersquatting issues to simple registration needs. A top-rated legal practice, Kelly / Warner maintains a 10-out-of-10 rating with venerated lawyer review group, Martindale-Hubbell. To learn more about our online intellectual property practice, click here. To speak with a domain dispute lawyer, get in touch. We can remedy your issue quickly, and at a competitive price.

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Think Before You .SUCK

.suck website legalities
.Suck websites are here. But before you take revenge on a rival, read about the potential legal ramifications over going overboard with a “suck site”.

They’re heeerrrreeee…..

Ladies and gents, we’re entering a new era of the Internet. For some time now, we’ve been freed from boring, generic top-level domains, like .com, .net, .org and .biz. Now, we can feast on spicy gTLDs, like .tv and .[your hometown].

And digital things are about to get more attention-grabbing, because .suck is now an available option. [Get ready judges, because we sense a new wave of Internet defamation lawsuits is on the way.]

Vox Populi Registry Ltd. “owns” the rights to the new gTLD — and is responsible for the roll out. The company makes money any time someone buys a .suck website.

How Much Do  The “Suck Sites” Cost?

Currently, .suck domains are only available to celebrities and trademark holders. This rarefied group must shell out around $2,000 per URL. According to reports, the company selling the .suck domains priced them high to deter malicious, cybersquatting actions.

In September, however, we “regulars” who want to own the .suck sites, for our businesses or names, can buy them for $9.95. However, if you choose this option, forget about using a website design of your choosing. Instead, you’re limited to using the registrar’s generic forum platform.

Is The .Suck Scheme a “Predatory Shakedown”? The Mega-Corps Think So.

Guess who isn’t happy about the .suck top-level domain option? Giant corporations, including Microsoft, Ebay and Verizon.

The mega-corps are so concerned about .suck sites that they’ve sicked one of their lobbying groups on the issue. Formally, the group has asked that the .suck roll out be postponed, calling it a “predatory…shakedown scheme.” Moreover, the companies believe that the general sign-up set to commence in September is “an essential element of Vox Populi’s coercive scheme.”

And the big wigs may get their way, as ICANN has yet to shoot down the lobby group’s request. As you probably already imagined, Vox Populi insists that it isn’t doing anything against the law or ICANN regulations.

The Consequences of an Ill-Advised .Suck Website

If you’re reading this, licking your revenge chops, and thinking: “Yes! I am so getting a .suck site to berate [insert name of enemy or business you hate],” you may want to slow your .suck roll.

Why?

Because you could find yourself on the losing side of a lawsuit.

What you can be charged with if you go too far with your .suck site about a person or business:

  • Defamation: It’s not illegal to say something negative about another person or business, but it is illegal to make a malicious, unprivileged, false statement of fact about another person or businesses.
  • False Light: In some jurisdictions, it’s illegal to paint an inaccurate picture of an individual that damages their reputation.
  • Trade Libel: Spreading untruths about a service or business is considered product disparagement, and it’s against the law.
  • Online Harassment: Threatening, stalking or otherwise mercilessly harassing a person is squarely illegal in every state.
  • Cyberbullying: Some jurisdictions have cyberbullying laws on the books that can be used for various types of online harassment.
  • Revenge Porn: Every week, another state is ratifying a revenge porn law. For an updated list, head here.

Get In Touch With An Internet Lawyer

Kelly / Warner Law is an Internet law firm. We work with both individuals and businesses that are dealing with online legal issues. To learn more about the firm, click here. To get in touch, click here. To set up a consultation, click here.

Thanks to our nationwide network of attorneys, Kelly / Warner handle cases in all 50 U.S. states. We also work with businesses based in Europe, Canada, Asia and Australia. Contact us.
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Domain Law: You Can’t Hold A Domain Hostage

Domain Name Trademark Law
Domain Name Trademark Law Case Study: WWE v. Cybersquatter

What happens when you own a domain name trademarked by someone else, and that someone wants it back? Do you have to give it up? Can you demand money for the prized URL?

We’ll answer these questions by reviewing a domain name trademark law case involving the WWE and an Internet entrepreneur.

WWE: A Brief History of Intellectual Property Disputes

World Wrestling Entertainment, Inc. (WWE) has a few intellectual property scuffles under its gaudy belt.

  • In 2002, the organization locked horns with World Wild Fund over the “WWF” acronym, and lost.
  • In 2007, the WWE entrusted a domain trademark claim to an arbitration panel, and won.

The WWE’s Domain Name Trademark Law Smackdown

A domain name dispute anchors the WWE’s latest online intellectual property showdown. And with proper wrestling panache, the opponent, Emad Ibrahim, is vowing domain vengeance.

Emad Ibrahim: Domain Name Marketer

Ibrahim owned (and may still own) several clever URLs including www.wwe.org. One day, a representative from World Wrestling Entertainment (WWE) contacted him and asked for the domain. Ibrahim agreed to give it up under one condition: he wanted $50,000.

WWE To Domain Name Owner: We Refuse To Pay You That Much For OUR Domain!

WWE refused, arguing that $50,000 was way over the “fair market value” for the URL. So, instead of throwing some dollars Ibrahim’s way, the WWE took the matter to the National Arbitration Forum, who, in-turn, sided with the wrestling association. Ibrahim was forced to give up wwe.org, for nothing.

“Cybersquatter” Vows Revenge Against Trademark Holder

Ibrahim did not accept the ruling with aplomb. Instead, before handing back his prized domain possession, he posted the following on wwe.org:

“You said I was threatening and blackmailing you; no I was not. This time I am. And I am not afraid of your stupid multi-billion dollar corporation.

“You will be fighting with your trademark to claim the upcoming thousands of WWE-related domains. You will also be fighting for your business welfare, which will be destroyed by these domains’ websites that will be identical to your wwe.com website.”

Can The Cybersquatter Reverse The Arbitration Decision And Prevail Against WWE?

You’re wondering: Does Ibrahim he have a legal leg to stand on? Was wwe.org wrongfully stripped from his domain arsenal by “the man”?

Well…….

UDRP and Arbitration Decisions Can and Have Been Overturned

On one hand, it’s possible to win a domain name trademark lawsuit after striking out with the Uniform Domain Dispute Resolution (UDRP) or arbitration processes. But a legal win is only possible if the UDRP or arbitration panel decisions were flat-out wrong, like in a recent case involving a medical facility.

So, theoretically, yes, Ibrahim may be able to wrestle back his domain via a lawsuit.

But……..

The Anti-Cybersquatting Act

In order to do so, Ibrahim would have to overcome protections in the Anticybersquatting Consumer Protection Act, which, essentially, gives trademark holders exclusive rights to the URLs donning their trademarks. As such, Ibrahim’s legal leg, in this instance, is exceptionally precarious.

It’s never wise to say never, but in this scenario, it’s suitable to say: Our domain protagonist has almost no shot at winning this domain name trademark law battle against the WWE.

Do you have a domain dispute trademark law issue? Get in touch with Kelly / Warner law.

Can You Trademark A Common Word: Seidman v. Chobani

Can you trademark a common word?
Is it possible to trademark a common word?

It’s a legal showdown between the Grand Poobah of corporate do-goodery and a small-town-saving yogurt company. Simple trademark rights are at the center of Dov Seidman v. Chobani, but one of the suit’s central legal questions – involving Twitter marketing — is teasingly complex.

Who’s Who: Dov Seidman and Chobani Yogurt

Dov Seidman: Corporate Management Guru

Author of “How: Why How We Do Anything Means Everything,” charity luminary and CEO of LRN, Dov Seidman coined the phrase “How Matters” — which he uses in promotional and corporate training materials.

Chobani Yogurt: “American Dream” Business

In 2005, a Greek immigrant saved a small upstate New York town when he took over a failing Kraft Foods factory, and turned it into the HQ of a successful American yogurt brand. What’s different about Chobani yogurt than all the other yogurts? Its texture, which is dependent on how the yogurt is strained.

Droga5: Chobani’s Creative Advertising Team

Partially owned by talent agency William Morris Endeavour, Droga5 is a marketing and design house, and the creative team behind Chobani’s latest re-brand.

Why Is LRN’s Dov Seidman Suing Chobani Yogurt For Trademark Infringement?

“How Matters” is at the heart of the matter:

  • Seidman uses the two-word tagline in his books and company corporate coaching materials.
  • In January 2014, Chobani launched a high-profile marketing campaign – replete with Super Bowl commercial – focusing on what makes Chobani yogurt better than other yogurts. The tag line of the campaign, “How Matters,” speaks to the company’s yogurt sifting technique.

Seidman feels that Chobani’s “How Matters” infringed on his “How” trademark. So, Seidman sued Chobani, plus Chobani’s marketing arm, Droga5.

And lest you think how-mannered Seidman has nothing to do with the suit — that it’s probably the busy work of meddling attorneys — think again. The LRN headman has made it clear that his Chobani battle is more than a legal fight, “It’s a moral fight – it’s a “how” fight.”

Unguard!

Chobani’s Defense Against Seidman’s Trademark Lawsuit: The Word “How” Can’t Be Trademarked; Oh, and We’ve Never Heard Of Seidman

Chobani spokespeople insist Seidman’s case is meritless. Their defense arguments:

  • Seidman should’ve never been granted a trademark on the word “how” to begin with, because its overbroad; and
  • Nobody on Team Chobani/Droga5 had heard of Seidman before or during development of the “How Matters” re-brand campaign; so, how could we have copied. (Though, trademark law isn’t about the elimination of copy-cats, which we’ll get to below.)

Since the lawsuit hit, the food manufacturer also decided to file a formal trademark application for the term “how matters.” Seidman also groused:

“They’re using ‘how’ to convey and connote that they are an ethical company. They are using ‘How’ exactly the way I use it. They’ve appropriated the foundation of my entire philosophy.”

What can be trademarked and what can’t?

Is Chobani right? Is “How” too broad a word to trademark? Yes and no.

Trademark law is less about “you copied my idea,” and more about “don’t confuse the marketplace or consumers.” In order to be granted an official trademark registration, you must demonstrate the unique and transformative nature of the thing you want to trademark.

Dov Seidman was able to trademark the word “how” because he popularly turned an adverb into a noun in the realm of the business consulting trade. But be sure, this is one of those cases where subjectivity and objective law collide.

The Intersection of Trademark Law and Social Media Marketing

The B-plot of Seidman v. Chobani is Chobani’s insistence that nobody from the yogurt company or Droga5 (the marketing team) knew of Dov Seidman’s work. Instead crediting a night out at an open kitchen eatery as the spark for “How Matters.”

But here’s the rub. Seidman can prove that in 2013, Andrew Essex, a Droga5 big-wig, lunched at LRN offices. Also, a few days before Chobani’s super bowl rollout, the company tweeter tweeted:

“@DovSeidman: Thanks for inspiring the world to care about ‘how.’ Can you help inspire the food industry, too?”

Damning, right?

Maybe not.

According to Chobani, Dov’s name was on a media lead-list of “influencers” that “might be worth alerting about the campaign.”

That explanation may sound farfetched to non-marketers and non-business-owners, but marketers and business owners know that Chobani’s justification is 100% feasible. Companies out-source social media tasks all the time.

Besides, lead/media/PR lists have been around since Barnum built his circus.

Which raises the question: legally speaking, what level of familiarity can we assume based on “marketing tweets?”

After all, do you know the philosophies and tag lines for all of your company’s social media followers and friends?

Now, is it a workable legal defense?

Maybe; maybe not. For starters, the tweet was specific and demonstrated an intimate knowledge of Seidman’s work. Moreover, companies are responsible for authorized work published under their brand.

But if Chobani does outsource its social media marketing, the provisions of its outsourcing contract could prove important.

But the question of whether or not a tweet constitutes a relationship is a tricky one, especially in today’s marketplace, where everyone’s “a friend” and a whole lot of businesses aren’t “in technical control” of their social media marketing efforts. In theory, these questions could become the pivotal ones in deciding Seidman v. Chobani.

Speak With A Trademark Lawyer

Kelly / Warner has a successful intellectual property litigation team. We also handle routine copyright and trademark licensing and registration. If you’re in the market for an intellectual property lawyer, get in touch with Kelly / Warner Law.

Business Competition: Can I Get A Domain Back If It Lapses?

business competition cybersquatting
Is it possible to get a domain name back after you let the registration lapse and a competitor picks it up?

All businesses compete. Some companies and people just cross the legality line when doing so.

And when it comes to cybersquatting, sometimes the legality line isn’t crystal clear.

The Domain Name Scuffle That Started A Business Competition Legal Skirmish

Two roofing companies, the Hatfields and McCoys of the Washington State roofing industry, are suiting up to do battle over a domain name.

The URL at issue is SpokaneCommercialRoofing.com. In 2012,  Les Ludtke, of Spokane Commercial Roofing (Roofer A), registered SpokaneCommercialRoofing.com, for one year, and put a website on it. 2013 rolled around, and Roofer A forgot to renew the domain. Jeffrey Sitton, of Spokane Roofing Co. (Roofer B), noticed Roofer A’s domain name registration lapse, scooped it up, and then forwarded it to his website, Spokaneroofing.com.

My competitor “cybersquatted” on my domain, capitalized off my intellectual property, and by doing so engaged in unfair business competition.

Upon realizing that Roofer B had snagged his old domain name, Roofer A sent a letter to Roofer B, outlining possible legal consequences for “stealing” his URL and re-directing it. When Roofer B got the letter, he stopped the re-direction. At the time of this writing, the website at issue is a blank white page.

Roofer A now wants the domain, SpokaneCommercialRoofing.com, back. So, he opted to file a lawsuit, arguing violations of the Anticybersquatting Consumer Protection Act.

Roofer A’s reasoning simmered down into a single sentence:

My competitor “cybersquatted” on my domain, capitalized off my intellectual property, and by doing so engaged in unfair business competition.

If Someone Buys Your Domain Name After You Let The Registration Lapse, Can You Get It Back?

For starters, domain names are not thrown back into the public pool the second a registration expires. It usually takes between 40 – 50 days before another entity can purchase your expired URL.

For starters, domain names are not thrown back into the public pool the second a registration expires. It usually takes between 40 – 50 days before another entity can purchase your expired URL.

But what if those 50 odd days pass? Can you still get your domain name back?

Holding an official trademark or copyright matters most when determining the likelihood of wrestling back a lapsed domain name. But, even if you haven’t registered your domain with the U.S. Trademark office, all goodbyes aren’t gone.

Legal Tactics Available To Get A Lapsed Domain Back

Uniform Dispute Resolution Policy

Individuals and businesses caught in the middle of domain disputes can take their case to the Internet Corporation for Assigned Names and Numbers (think: Guardians of the Galaxy, Domain Name Department). ICANN reviews cases using the Uniform Dispute Resolution Policy, and the panel’s rulings are usually (not always) upheld in a court of law.

You must pay ICANN a fee to review your case; the cost is dependent on how many “judges” weigh in on the issue.

Proper Paperwork Matters When Filing UDRP Review Requests

UDRP filings are complicated; one wrong check-mark will land you in the rejection pile. So, if you plan to go the ICANN/UDRP route to deal with your business competition cybersquatting scenario, enlist a lawyer who has dealt with ICANN in the past and knows the ropes.

File A Lawsuit Using The Anticybersquatting Consumer Protection Act

Federal Law For Registered and Common-Law Trademarks

Enacted in 1999, the Anticybersquatting Consumer Protection Act protects trademarked domain names. Businesses with trademark-registered URLs and companies with established reputations in their industries (common-law trademark), can use the act (in most cases) to prevent other parties from “stealing domain names” — even if the URL registration has lapsed.

In most cases, in order to win Anticybersquatting Consumer Protection Act claims, plaintiffs must prove that defendants profited from their actions.

Generic Keyword Domain Names Requires Experienced Representation

If your domain name is also a generic keyword (like in our Roofer lawsuit above), the decision may come down to the quality of each side’s arguments. After all, is it fair to trademark a keyword phrase that every business, in a given industry and region, must “use” to rank well in search engines? If you decide to go the domain dispute lawsuit route, find a lawyer who has successfully handled business competition cybersquatting cases in the past.

After all, is it fair to trademark a keyword phrase that every business, in a given industry and region, must “use” to rank well in search engines?

Contact A Business Competition Attorney With Cybersquatting Law Experience

Kelly / Warner Law is an AV-rated legal practice, with a 10-out-of-10 AVVO rating.

A law firm for today’s marketplace, all Kelly / Warner attorneys have a strong Internet law background.

Kelly / Warner’s litigation record is exemplary; moreover, we’re a practice of straight-shooters who will tell you the quickest, and least costly, path to take.

It’s time to get it done. It’s time to solve your cybersquatting problem. Give us a call or send an email, today.

Qihoo v. Tencent Anti-Trust: The Final Showdown Underway

China-Internet-laws
China’s first Internet law anti-trust case is underway!

An epic Internet law case is currently making headlines in China. Qihoo 360 Technology Co. Ltd (“Qihoo”) is suing Tencent, the world’s 3rd largest Internet company behind Amazon and Google. The legal question up for debate is whether or not Tencent is an illegal monopoly engaging in unfair practices. Yep, it’s like the Google antitrust saga – Eastern Hemisphere edition.

About Tencent

TencentPenguinLogo
Arguably the Google of China, Tencent has its tentacles in nearly every facet of Internet business. Valued at US$101B in 2013, the ISP handles approximately 90% of the country’s instant messaging traffic. The company’s mascot — a squat penguin with a red scarf — is as ubiquitous in China as the Nike swoosh is in the United States.

2010: The Qihoo/Tencent Rivalry Origins

In September 2010 Qihoo launched legal proceedings against Tencent for allegedly invading users’ privacy via QQ Doctor – a Tencent security packet for the company’s popular QQ IM service. Qihoo insists Tencent used QQ Doctor to scan and monitor the personally identifiable information of users.

Speculation abounded, however, about Qihoo’s motivation in filing the original lawsuit, for the company was scheduled to release a competing security package – Koukou Guard – in October 2010. The marketing materials for Koukou promised to speed up QQ IM and offer better privacy. The timing of the lawsuit and the release of the product had cynics thinking the lawsuit was simply a marketing effort for the new product.

Subsequently, on November 3, 2010, Tencent announced it would shut down its popular instant messaging app on any computer running Quihoo’s security package. Tencent swore the shut downs were only a matter of protecting users’ rights and privacy.

From that point, it was pretty much on between Tencent and Qihoo. Things got so heated the Ministry of Industry and Information Technology censured both sides to curb the antics.

Upon release of Koukou Guard, however, Tencent released a provacative statement averring that Qihoo’s new security product would break Tencent products. Qihoo says it lost $135M thanks to the statement.

2012: Let The Qihoo/Tencent Battle Continue!

About Qihoo 360

360-logo
Founded in 2005, Qihoo is another Chinese Internet Service Provider with a Web browser and several mobile apps in its portfolio. As you might imagine, Qihoo and Tencent are fierce competitors.

Fast Forward to November 2012. Despite the ministry censure, Qihoo once again filed suit against Tencent. This time around Qihoo argued that Tencent abused its dominant market position with the Koukou-related announcement. Unfortunately for Qihoo, in March 2013, the Guangdong High People’s Court rejected Qihoo’s case.

Undeterred, Qihoo decided to take the issue to the Supreme People’s Court. At the beginning of this month, both sides made arguments. Now, the Supreme People’s justices must deliberate and ultimately rule on the definition of “Internet Marketplace.”

One of The First Big Monopoly Lawsuits Since China’s 2008 Anti-Monopoly Law

The Qihoo versus Tencent showdown is significant not only for its impact on Internet law, but because it is one of the first major anti-monopoly cases to be heard since China passed its 2008 anti-trust law. As such, the case is expected to set precedence.

A law Professor at Peking University explained to the press that Chinese anti-trust law considers 3 elements:

  1. Whether or not an entity is unfairly blocking competitors;
  2. Whether or not government intervention is a factor;
  3. Whether or not barriers to entry of a given industry are low.

A widely followed case in the People’s Republic, many folks want the court to hold a public hearing to solicit opinions about Tencent’s alleged dominant market position. As you might imagine, smaller Internet companies in China are dying to weigh in on the issue.

If this case resolves like the Google monopoly investigation, Tencent will get a slap on the wrist and a stern warning to watch itself. If the Supreme People’s Court sides with Qihoo, perhaps Chinese technology companies will start seeking greener pastures to grow.

Online Trade Libel Case Study: The Battle Of The Mail-Order Bride Websites

academic defamation lawsuits
An online business thought their competitor was behind a so-called “suck site”, so it sued.

A pair of mail-order bride websites – Anastasia International and EM Models (dba, Elena’s Models) — went toe-to-toe in court. By way of a lawsuit, Anastasia accused EM of false advertising, trademark infringement and defamation, alleging the latter hired a Web developer to make a “suck site” called anastasiadatingfraud.com.  EM Models denied the claim, and in the end a judge sided with the defendant because the plaintiff couldn’t produce enough proof.

How This Online Trade Libel Lawsuit Started

Anastasia International is a fee-based online dating service featuring women from Russia and Ukraine. It’s based in Kentucky, with offices in New York. In May, the mail-order bride type site filed a lawsuit against one of their competitors, EM Models. Why? Well, executives at Anastasia were convinced that EM had paid Juha Natunen to create anastasiadatingfraud.com, a website which accused Anastasia’s women of stringing men along with the intention of “breaking their hearts” in the end.

Irate over the website, Anastasia sued for defamation, false advertising and trademark infringement.

Could A Hyperlink On The Suck Site Work In Favor Of The Plaintiff?

Apparently, when Anastasia International first filed the lawsuit, someone removed a link on anastasiadatingfraud.com that had led to EM Models. During the proceedings, the judge said the removal of the link was the “strongest factual claim bolstering [Anastasia’s] argument” that EM paid to have the site created. In the end, though, the judge decided that “such an allegation of temporal proximity is not enough to show any connection or communication whatsoever, let alone an agency relationship, between Juha Natunen and EM Online. In other words: a link is not proof enough that EM hired Natunen to build the site.

The court ordered Anastasia to pay Elena Model’s attorney fees because the former kept the latter as a defendant without proof for an extended period of time.

Competition Litigation No-No: Don’t Make It Obvious You Only Care About Hurting The Competition

If you’ve been following along, you may have thought, “Hey, why didn’t Anastasia sue the website operator, Juha Natunen, for defamation instead of just suing competitor EM Models?” If that thought did cross your mind, you’re not alone. The judge in the case factored this thought into the ruling, reasoning that Anastasia’s refusal to drop EM Models from the lawsuit smacked of “a competitive ploy.”

Be Smart, Don’t Purposefully Jump On The Trade Libel Wagon

You may have the urge to secretly fund an attack website of your competitor. Don’t do it. It’s more likely you’ll be found out than not. And if you are, the amount you’ll most likely have to pay if you lose a defamation lawsuit may far outweigh the potential profit gain from plating dirty.

Kelly Warner Law deals with all things business and defamation law-related. Whether you need an attorney to draft an operating agreement or help you go after a competitor who is playing out of bounds, we can help. We are a top-rated law firm that won’t cost you a small fortune. Get in touch today to begin the conversation.

Game Developer Lawsuits: Battle Of The Gaming Tanks

game developer lawsuits
A new game developer lawsuit raises a few questions regarding online intellectual property.

Are you ready for some football tank wars!? A game developer v. game developer lawsuit includes elements of online intellectual property and slander…kinda.

How This Game Developer Lawsuit Started

World of Tanks is a game developed by Wargaming.net. Project Tank (a.k.a., Tanks Ground War) is a game developed by China-based Gamebox. As you can probably surmise from their descriptive titles, both games deal with tanks. Apparently, though, Wargaming isn’t happy Gamebox developed a tank game too, so they’re suing for intellectual property infringement.

The Tank Game Developer Lawsuit Specifics

In their claim, Wargaming insists Project Tank is “disturbingly similar” to World of Tanks. The U.S.game developer avers Gamebox “copied the plot, theme, dialogue, mood, setting, pace, and character of World of Tanks, in addition to copying specific features, items, tanks, and artwork.”

As a result of the original game developer lawsuit, Facebook pulled Project Tank from its platform. As you’d imagine, the expulsion from the social-networking site was a blow to Gamebox’s bottom line.

Defendant’s Reaction & Counter Game Developer Lawsuit

When asked for comment about the game developer lawsuit, a representative from Gamebox explained the company’s position – and took the opportunity to snark on the big-box game development firm, Wargaming. Specifically, Gamebox opined, “we feel truly shocked and bullied by Wargaming, a giant company of the gaming industry who is apparently ‘threatened’ by a closed beta phase browser game aiming to provide a cheaper, fairer, and more accessible war game to players around the world.”

Unwilling to go quietly into that deep night, Gamebox opted to file a counter-claim. The Chinese developer is alleging “illicit competition and slander.”

What Are The Chances Of Gamebox Wining The Counter-Claim?

The illicit competition charge has some definite merit if argued well. Intellectual property infringement often turns on whether or not the alleged “theft” was of a mechanical or artistic nature. As such, in their claim, Gamebox deftly argued that any similarities between the two games are a mere result of both being video games about a similar theme. After all, a tank is a tank is a tank – the number of differing depictions of a tank are few and far between.

Another factor bolstering Gamebox’s case is Project Tank’s expulsion from Facebook. In order to win an intellectual property game developer lawsuit, it’s necessary to prove financial harm. Going on the available information, Project Tank’s makers should be able to present a very strong argument that getting kicked off Facebook hurt their business tremendously.

Their chances of winning the slander claim, however, are less auspicious. To put it simply, slander is spoken defamation and libel is written defamation. Now, there may be an element of this case that has not yet been made public, in which case Gamebox could have a strong slander case. But if we’re only looking at the facts currently available, there is a strong possibility a judge will toss the slander charge quicker than you can say “tank.”

Moreover, in most cases, accusations lodged in a formal lawsuit are considered privileged, and thus not actionable under available defamation statutes.

Do you need a game developer lawyer? Contact Kelly Warner Law. We have a strong, well-respected technology law team that deals with game developer lawsuits and litigation. Get in touch anytime.

If I’m The First to File A Trademark Registration, Do I Get It?

trademark
Is the trademark “Dunk City” up for grabs?

A Florida businessman is trying to grab the trademark rights to “Dunk City.” Will the USPTO grant him the rights to the phrase? Does he have a legal leg to stand on?

Florida Gulf Coast University came, saw, and conquered. Well, they conquered until the Elite 8 when a neighbor Gator team defeated the beloved underdog of this year’s NCAA tourney. But the loss mattered little.  America was already smoldering with a case of FGCU fever. People wondered, “What is the deal with this school and how did they get such a talented basketball team!? Is it a fluke, or is FGCU a new force on the court?

Within days, every leading media outlet mentioned the new Florida university, and all used the term ‘Dunk City’ – a moniker of unclear origins – to refer to the new basketball phenoms.

Now, an industrious businessman from the Gulf Coast – who clearly understands the financial power of intellectual property – is trying to register the trademark “Dunk City.” Can he?

Dunk City Intellectual Property Case Background

FGCU came into existence at about the same time the Internet began spreading through the suburbs like wild ivy, 1991. So, it is fitting that the tagline for which the school is now inextricably linked – Dunk City – dribbled into existence via hashtags, blogs posts and social media updates.

Perhaps “Dunk City’s” lack of verifiable provenance is why music producer Charlie Pennachio of Fort Myers, Florida, tried to snag federal trademark rights to the phrase soon after it went viral. After all, the chances that another party had already filed for the registration was slim.

In the middle of the FGCU winning streak, encouraged by his business partner –Florida music personality and VH1 reality show participant, Tripp Tribbett – Pennachio filed trademark registration paperwork with the United States Trademark and Patent Office. He requested rights to the phrase “Dunk City” for a yet undetermined business.

Florida Gulf State University’s Claim to “Dunk City”

Currently, Florida Gulf Coast University is using “Dunk City” on merchandise alongside its logo. Perhaps more importantly, from a trademark registration standpoint, the school has been selling said products emblazoned with the phrase – which means the school was the first entity to use the mark in commerce.

Additionally, not only does a splash page on the school’s website now dons the tagline, but FGCU also used “the term as a part of a campus food drive. The school created Sixteen hundred student IDs with the ‘Dunk City’ moniker.” Students who donated goods to a local food bank drive were given the special IDs as thanks.

The position of Michael Van Wieren, General Counsel of licensing Resource Group, the firm that handles school’s licensing program, is “‘Dunk City’ is inextricably linked with FGCU. Had it not have achieved its fame or notoriety.”

Does Pennachio Have A Shot At Being Granted The Trademark Registration for ‘Dunk City’?

The question of the hour is: does Pennachio have a chance at beating FGCU to the USPTO? And if he does, could he be granted the trademark registration for “Dunk City”?

In two words: probably not.  Here’s why:

  1. According to the Lanham Act – the nation’s chief trademark law – a party cannot register a trademark if another party is already using the mark or phrase commercially. Since the university uses it on merchandise, Pennachio will have a hard time proving that he used the term first. Most noteworthy, Pennachio admits to not hearing of the phrase until FGCU’s NCAA success.
  2. The school could argue “Dunk City” is technically a collective trademark of FGCU since the university used it on student identification badges. As a collective trademark, the school would enjoy strong trademark protections./li>
  3. The annual NCAA Basketball Tournament is a popular, national happening. Since “Dunk City” entered the public arena via a highly publicized event, attorneys for FGCU easily could  argue that the phrase is a “famous trademark” – which means it would be granted superior protection under the law. As such, the holders (FGCU) could sue for infringement and trademark dilution if Pennachio, et al. tried to use it to promote a music company.  Moreover, since there is no need to show likelihood of confusion, FGCU could stop others from using the mark in unrelated fields.  However, showing that a mark has reached a “famous” level is not a given, especially since it has only been in use for a short while — even with Dickie V. shouting it from courtside.

If you have a trademark legal issue, and need a lawyer who regularly deals with intellectual property litigation, get in touch with us here.

Wee Man Isn’t Happy About Elf Man Illegal Downloading Lawsuits

illegal downloading elf-man lawsuits
Wee Man is not happy about Elf-Man Illegal Downloading Lawsuits.

Well, it looks like porn studios aren’t the only entertainment executives diving into the piracy litigation pool. One of the dare devils from the Jackass franchise, Jason “Wee Man” Acuna, has found himself caught in the center of an online copyright infringement case. But the small-statured actor wants fans to know that he’s not the one behind the illegal downloading crackdown involving Elf-Man – a family-friendly DVD movie in which he stared.

New Rash Of Illegal Downloading Lawsuits: ELF-Man Downloaders Under Siege

A straight to DVD Christmas miracle, Elf-Man is a flick chronicling the high-jinx of a stranded Elf who helps the beleaguered Harper family have a happy Christmas. Now, I know what you’re thinking. A true Hollywood powerhouse like MGM or Miramax must be behind Elf-Man. But no, Elf-Man was the brain child of Elf-Man LLC – a small independent movie company. And now Elf-Man LLC is suing about 200 people in Oregon and Colorado – 200 people the small movie company says downloaded the Acuna movie using BitTorrent technology.

Wee Man Speaks Out Against Illegal Downloading Lawsuit

A true adversary of propriety himself (you don’t attempt the things they attempt on Jackass unless you have a healthy sense of going against the grain), Wee Man took Twitter to inform followers that he is not down with Elf-Man LLC’s litigious pursuits.

From WeeMan’s Twitter:

@massive my representation has spoken to them…I’m not backing it at all…Has NOTHING to do w/me!! It’s all them…

Elf-Man’s illegal downloading lawsuits seem to be following the standard piracy litigation script established by firms like Prenda Law, which have a history of representing so-called copyright trolls.

Elf-Man Illegal Downloading Lawsuit Features A New Plaintiff Argument

The Elf-Man illegal downloading lawsuits include a new – and arguably whinny – plaintiff argument. In a presumable attempt to frame the plaintiffs in a sympathetic, cash-poor light, the lawsuit specifically mentions the perception that movie people are loaded. It reads:

“When the perception that those affiliated with a motion picture are already wealthy, and the end product, such as a DVD costs very little to make, a reality disconnect often builds in the minds of much of the public, namely that those associated with a motion picture do not need any more money.”

Now That It’s Not Just Porn Companies Using The ‘Copyright Troll’ Playbook, Will Judges Soften?

Judges, for the most part, have been loath to give porn companies the upper hand in these illegal downloading lawsuits, but how will they handle claims from less salacious plaintiffs? Will courts find differently in cases that don’t involve adult entertainment – a controversial medium in it of itself? We’ll just have to wait and see. But in the meantime, know that Wee Man is not the man behind the Elf-Man illegal downloading lawsuit.