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.
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.
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.
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.
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.