A U.S. court ruling paved the way for lawsuits against domain 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 – which financially benefited both GoDaddy and the would-be cybersquatter.
As you may have already guessed, during Oscar season, the domain entrepreneur made a killing via ads on the sites.
AMPAS brass didn’t like someone profiting off its brand. So, the Academy filed a cybersquatting lawsuit.
Violations of the Anticybersquatting Consumer protection Act
In 1999, 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 that law only shelters parties that don’t profit – in any way – from an infringing URL. 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’s the drawback of UDRP rulings? They’re nonbinding.
In the event that a UDRP ruling doesn’t 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 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.