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Tag Archives: Cybersquattting

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 Defends Tucks.com in Domain Name Dispute

In a unanimous decision of the World Intellectual Property Organization, a three member Panel denied the complaint of Johnson and Johnson in a domain name dispute filed against Webquest, Inc., the owner of the descriptive word domain name, Tucks.com.  The decision came as a vindication of the rights of professional domain name investors, who register dictionary word domain names for their value as generic terms, and not for their association with known brands.  Notwithstanding the proliferation of new gTLDs and the anticipated launch of new TLDs by ICANN, .com domain names remain the hottest commodity on the market.  In a world where companies choose dictionary words and last names as product names, and there exists a dispute resolution process that can be subjective, domain investors often find themselves on the receiving end of administrative proceedings.  Panelists are paid very little to sift through piles of evidence and conflicting arguments.  Perhaps as a result, decisions can often be formulaic and interpretation of the Policy overly rigid.  In this case, however, the Panel gave thoughtful consideration to the evidence, or lack thereof, in finding that the Complainant had failed to demonstrate bad faith on the part of the Respondent.    

 

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.

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.