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Tag Archives: ACPA

Lewis & Lin Wins Summary Judgment on Cybersquatting Claim

Lewis & Lin recently won a motion for summary judgment in our case against a domain name cybersquatter. We represented plaintiff Alpha Recycling, Inc. a New York company that recycles catalytic converters and scrap metal. The defendant was a precious metal broker who sold several million dollars’ worth of catalytic converters to our client before their business relationship soured. During the course of their dealings, defendant registered a number of domain names that used the term “alpha” in relation to recycling services, including and .

Lewis & Lin filed a complaint in Federal Court in New York asserting claims for cybersquatting under the Anticybersquatting Consumer Protection Act (“ACPA”), as well as common law claims for defamation and trade libel, unfair competition, and trademark infringement. We also filed a motion seeking summary judgment on our cybersquatting claim.

Under the ACPA, to successfully assert a claim for cybersquatting, a plaintiff must demonstrate that (1) its marks were distinctive at the time the domain name was registered; (2) the domain names complained of are identical to or confusingly similar to plaintiff’s mark; and (3) the infringer had a bad faith intent to profit from that mark. The defendant opposed summary judgment on two grounds: that the ALPHA mark was not distinctive, and that defendant lacked the requisite bad faith.

We argued that the term ALPHA, when used in connection with plaintiff’s goods and services, is arbitrary and therefore inherently distinctive and entitled to trademark protection. As to the defendant’s bad faith, we pointed out that visitors to the domains at issue were directed to defendant’s own website. The defendant testified that he redirected the traffic in order to “get back at [Alpha]” because “they had taken away a very large portion of [his] business.” He also posted a video to YouTube with the title “Alpha Catalytic Converter Recycling Experts” that was actually a commercial for defendant’s own business. Finally, we submitted evidence to show that defendant is a repeat cybersquatter who had registered domain names incorporating the marks of other firms.

Judge J. Paul Oetken of the Southern District of New York agreed with us on both points and ruled in our favor. The case is Alpha Recycling, Inc. v. Crosby, No. 14-CV-5015 (JPO), S.D.N.Y.

Reverse Domain Hijacking Defendants Consent to Judgement

In a swift and clear victory for our client, Lewis & Lin obtained an offer of judgment from an attempted domain name hijacker shortly after filing a federal court complaint.

After losing a UDRP proceeding by default, the owners of MyArt.com retained Lewis & Lin to stop the transfer of the domain name under ICANN rules. Lewis & Lin immediately filed suit in the U.S. District Court for the Southern District of New York against My Art SAS, a French company engaged in the sale of artwork, and its principal shareholder. Our complaint sought relief for reverse domain name hijacking under the Lanham Act, as well as related state unfair competition claims.

Barely a month after being served with the complaint, defendants issued an offer of judgment consenting to all of the declaratory relief that we sought on behalf of our client. Defendants also offered a monetary judgment in an amount that included statutory damages, attorney’s fees and litigation costs. The offer of judgment was accepted and judgment was entered in favor of our client.

This case illustrates that a UDRP loss has absolutely no bearing on subsequent litigation between the same parties and the same domain name. A UDRP panel’s decision, which is not based on U.S. trademark law, will be entitled to no deference, and will have no preclusive effect in a federal court case. For domain name registrants who fall victim to the efforts of reverse domain hijackers attempting to seize a domain in the UDRP process, there is hope to recover a hijacked domain. Simply by filing a federal lawsuit and requiring the attempted hijacker to defend their actions, a domain name registrant can keep what’s rightfully theirs. For more information on reverse domain hijacking and the UDRP, contact David Lin at Lewis & Lin LLC.

Lewis & Lin Obtains Fee Award in Personal Name Cybersquatting Case

In a case of first impression under 15 U.S.C. 8131 — the personal name cybersquatting provision of the Anticybersquatting Consumer Protection Act — Lewis & Lin obtained a court order awarding attorneys’ fees as the prevailing party under the ACPA.

Section 8131 of the ACPA imposes civil liability on “[a]ny person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name.  Under the ACPA, the court may issue and injunction and, “in its discretion, award costs and attorneys fees to the prevailing party.”

Noting that “[t]here is little caselaw providing guidance on an award of fees under section 8131 of the ACPA,” the U.S. District Court for the Southern District of New York analyzed Lewis & Lin’s request under 15 U.S.C. 1117(a) — the standard for an award of fees under the Lanham (U.S. Trademark) Act.  Citing a California case, the court ruled that in determining whether to award attorneys’ fees, courts should consider “a number of factors, including the egregiousness or willfulness of the defendant’s cybersquatting . . . and other behavior by the defendant evidencing an attitude of contempt towards the court of the proceedings.”  The court found that in the current case, the defendant’s conduct merited an award of attorneys’ fees.

First, “the defendant’s use of plaintiff’s name in the domains was sufficiently willful.”  Second, the “defendant has evidenced contempt towards the Court throughout these proceedings.”  Accordingly, the Court ordered that “attorneys’ fees are warranted in this ACPA action.”  

Lewis & Lin Partner David D. Lin was the lead attorney on this matter.  The case is No. 11 Civ. 8093 (KBF) in the U.S. District Court for the Southern District of New York.  Please contact us if you would like a copy of the opinion.

Lewis & Lin Obtains Fee Award in Personal Name Cybersquatting Case

In a case of first impression under 15 U.S.C. 8131 — the personal name cybersquatting provision of the Anticybersquatting Consumer Protection Act — Lewis & Lin obtained a court order awarding attorneys’ fees as the prevailing party under the ACPA.

Section 8131 of the ACPA imposes civil liability on “[a]ny person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name.  Under the ACPA, the court may issue and injunction and, “in its discretion, award costs and attorneys fees to the prevailing party.”

Noting that “[t]here is little caselaw providing guidance on an award of fees under section 8131 of the ACPA,” the U.S. District Court for the Southern District of New York analyzed Lewis & Lin’s request under 15 U.S.C. 1117(a) — the standard for an award of fees under the Lanham (U.S. Trademark) Act.  Citing a California case, the court ruled that in determining whether to award attorneys’ fees, courts should consider “a number of factors, including the egregiousness or willfulness of the defendant’s cybersquatting . . . and other behavior by the defendant evidencing an attitude of contempt towards the court of the proceedings.”  The court found that in the current case, the defendant’s conduct merited an award of attorneys’ fees.

First, “the defendant’s use of plaintiff’s name in the domains was sufficiently willful.”  Second, the “defendant has evidenced contempt towards the Court throughout these proceedings.”  Accordingly, the Court ordered that “attorneys’ fees are warranted in this ACPA action.”  

Lewis & Lin Partner David D. Lin was the lead attorney on this matter.  The case is No. 11 Civ. 8093 (KBF) in the U.S. District Court for the Southern District of New York.  Please contact us if you would like a copy of the opinion.

Lewis & Lin Victory In Personal Name Cybersquatting Case

In one of the first cases dealing with the Anticybersquatting Consumer Protection Act’s provision on personal name cybersquatting, Lewis & Lin has obtained a preliminary injunction in the Southern District of New York. 

The ACPA’s cyberpiracy protection for individuals provides:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

15 U.S.C. § 8131.  The statute also provides for one exception to civil liability:

A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under this paragraph if such name is used in, affiliated with, or related to a work of authorship protected under title 17, including a work made for hire as defined in section 101 of title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person.

Id. § 8131(1)(B) (emphasis added). 

In the case handled by Lewis & Lin, the defendant purchased two domain names—multiple versions of the plaintiff’s real name—for less than twenty dollars in total, and, within several days, posted an offer to sell the domain names for $1,000,000 each.  The court concluded that such acts were “strongly probative of a specific intent to profit,” thus violating the ACPA’s provisions.

The defendant had argued that the exception under § 8131(1)(B) applied, because the domain names were being sold in conjunction with a “work of authorship” that also bore the plaintiff’s name.  After a thorough analysis of both the websites associated with the domain names and the purported artwork, the court concluded that it was “simply not convinced that the defendant has made any showing of good faith here to qualify for the statutory exception.”  For these reasons, the court ruled that Lewis & Lin had demonstrated a likelihood of success on the merits of the claim, and issued a preliminary injunction ordering the defendant to remove all existing content from the domain names.

The case is Bogoni v. Gomez, No. 11 CV 8093 (S.D.N.Y. Dec. 28, 2011).  The full opinion is available here.