Lawsuits

In addition to the UDRP proceedingscourt lawsuits (which can be completed in approximately 3 months), lawsuits can be initiated in the federal courts of the United States to resolve disputes with respect to domain name ownership issues. Although lawsuits usually last much longer than UDRP proceedings, they are more effective in resolving domain name disputes in a number of ways. These advantages of U.S. federal court lawsuits include:

Lawsuits result in a more final determination with respect to domain name disputes. Although UDRP proceedings can result in a relatively fast, inexpensive determination of domain name ownership rights, they do not result in a final determination. They can be appealed to a federal court.

Lawsuit proceedings involve a much more elaborate, detailed review of the evidence. Although the UDRP arbitrators will review and consider virtually any type of evidence that the complainant or the domain name owner will present, federal judge and jury will only consider evidence that complies with a fairly complex set of federal rules and regulations.

Lawsuit proceedings can result in monetary awards. Money damages can be awarded either to the complainant or to the domain name owner. A complainant can obtain a decision requiring that the domain owner pay penalties, damages and attorney fees to the complainant. Similarly a domain name owner can obtain a decision that the complainant must pay to the domain name owner damages and attorney fees.

Lawsuits in the United States Federal Courts

United States Federal Courts have remarkable control and jurisdiction over the Internet. Although a number of other governments of other countries have complained about the United federal courtsStates’ domination and control of the Internet, the United States continues to have a substantial amount of control and authority over Internet activities. One of the primary reasons for this extraordinary power of the United States over the Internet is the fact that the Internet was initially developed and originated in the United States. Consequently, the principal registry of the Internet is located in the State of Virginia in the United States. The registry is the primary database which contains all of the principal domain names and which provides the resolution of the domain name to an IP address. Consequently, if a lawsuit is initiated in the State of Virginia, the United States District Court for the Eastern District of Virginia can issue a decision which can be enforced on the registry in the State of Virginia to require that domain names be transferred or locked. Similarly, lawsuits that are initiated in other states within the United States can result in Federal Court decisions that can be enforced on registrars and individuals located within the respective states.

This law firm has a major advantage in handling domain name disputes because it is located near the Virginia Federal Court and frequently litigates lawsuits in the Virginia Federal Courts. It is one of the very few law firms specializing in domain name disputes which has attorneys licensed to litigate in Federal Court proceedings in Virginia. Consequently, this law firm can obtain decisions that can be enforced on the principal registry in Virginia -- which can result in a transfer of a domain name from a domain name owner that may be located anywhere in the world. In spite of the fact that an owner of a domain may reside in a foreign country, a decision by this U.S. Federal Court can order the transfer of the domain name to another individual or company. This is a very substantial advantage for this law firm-- particularly since many of the domain names that are disputed are owned by individuals or registered with registrars outside the United States. This law firm has successfully litigated in this important Virginia Federal Court in a number of domain name disputes. Because of this experience and ability to litigate in this important Federal Court, this law firm can litigate domain name disputes economically and efficiently.

The United States Federal Court system is structured in three levels. The first level is the District Court in which lawsuits are initiated. The United States is divided into a number of districts with each respective district court having jurisdiction over the designated geographical area. A decision that is issued by the District Court can then be appealed to the second level of the court system, called the circuit court of appeals. The United States is divided into nine circuit court geographical areas. This circuit court level can overturn or uphold decisions are made at the district court level. The highest level in the court system is the United States Supreme Court. Any decision made by the United States circuit courts can be appealed to the Supreme Court for a final determination. This law firm can litigate in any of the district courts, any of the circuit courts of appeal and in the Supreme Court of the United States. Because this law firm has substantial experience and success in this in the Federal Court system, this experience and expertise and proven success can be a powerful negotiating strength that can be utilized to provide a solid protection of your rights. If the law firm representing the opposing party reviews the experience, expertise and success is of this law firm in litigating domain name disputes and the United States' Federal Court system, they will realize that there will be a tough fight against a formidable opposition. Consequently, the opposing party may wish to settle or acquiesce in order to avoid a difficult litigation battle that may result in their defeat.

The two principal types of laws that are relevant in domain name disputes are the cybersquatting laws and federal trademark laws

U. S. Federal Anti-Cybersquatting laws

As a result of the lobbying of trademark owners and corporations, the United States Congress enacted domain hijackthe Anti-Cybersquatting Consumer Protection Act in 1999 in order to attempt to halt Cybersquatting activity. Since the ACPA is a federal law, litigation must be initiated in U.S. Federal courts in order to utilize this law to obtain domain names, impose penalties and recover damages.

If a Federal Court decides that the ACPA has been violated, the court can order that the domain name be transferred to the plaintiff. The ACPA also provides that a penalty of $100,000 per domain name can be assessed against the plaintiff. Furthermore, money damages and attorney fees can also be recovered by the plaintiff from the domain name owner if the plaintiff is successful in the litigation.

U.S. Federal courts are authorized to make decisions in litigation that involves the Anti-Cybersquatting Consumer Protection Act (ACPA), Some of the general factors involved in the proof of the violation of the ACPA are as follows:

  • Whether a term contained in the domain name is protected by trademark rights.

  • The domain name is the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person.

  • Whether the domain name (prior to notice of the dispute) has been used in connection with a bona fide sale of goods or services.

  • Whether the domain name is used (or is in the process of being developed to be used) in a bona fide noncommercial or fair use way at a web site.

  • Whether the domain name holder has had the intent to attempt to divert consumers from the trademark owner by attempting to create confusion, either for commercial gain or in a way that may tarnish or disparage the trademark mark.

Trademark Lawsuits

Trademark law has been in existence in the United States for more than 100 years. The principal rationale behind trademark laws is that they help to avoid consumertrademark confusion. A Company may decide to use a particular word, phrase or design to represent a brand of a product or service that the Company may offer. The Company may then proceed to spend substantial amounts or marketing and advertising in order to increase consumer awareness of the brand designation. If an individual or another Company attempts to use a similar brand word, phrase or logo, there may be confusion in the mind of consumers. Consequently, consumers may be confused and purchase the product or service that is being marketed under the similar brand designation instead of purchasing a product that is being marketed by the company that owns the trademark for the brand designation. In order to protect the investment of companies in the advertising and marketing of their brand name and to avoid consumer confusion, the United States Congress has enacted trademark laws to provide penalties and remedies for the Company that owns the trademark brand. Consequently, a company that believes that another Company is attempting to take business away by utilizing a similar, confusing brand designation, can initiate a lawsuit in Federal Court pursuant to the federal trademark laws.

Since a domain name may contain a word or phrase that is confusingly similar to a trademark brand designation, a domain name dispute which involves the possible infringement of the trademark can be initiated in United States federal courts in order to enforce trademark laws against the owner of the domain name that is allegedly creating consumer confusion by owning and utilizing a domain name that is confusing.

Usually litigation involving domain name disputes will be based on allegations that the domain name owner has violated both the anti-Cybersquatting laws and federal trademark laws.

Outcomes of Domain Name Disputes

There are many different ways that domain name disputes can be resolved or settled. An initial cease and desist letter may be settled by a solid response letter and telephone calls from your attorney. If you have a strong position, it is important that you demonstrate that you are willing to fight for your position and have hired a strong, effective law firm. The sender of a cease-and-desist letter may decide that it is not worthwhile to pursue the matter further. This is particularly true when the cease-and-desist letter is a bluff without a firm legal basis. Increasingly, companies and individuals are sending out numerous cease-and-desist letters -- some of which have very little merit or no merit at all. Their objective is to intimidate the receiver of the letter and hope that the owner of the domain name will give up the domain name out of fear.

domain name disputesConsequently, an initial cease and desist communication may result in (1) the sender of the letter backing down, (2) discussion of the communication with a solid, confident legal position demonstrating a willingness to fight hard, (3) it can lead to the filing of a UDRP action or (4) one of the parties may decide to file a federal lawsuit. The results will depend upon the strength of your position, the strength of your response, the strength of your legal counsel, the motivation of the sender of the cease-and-desist letter (and the strength of their position). Although the sender of the letter may proceed to a lawsuit, the most common course of action is to next file a complaint in a UDRP proceeding.

The next step from a cease-and-desist letter is usually the filing of a UDRP complaint. The process can last two or three months. The decision will either be that the owner can keep the domain name or that domain name should be transferred to the complainant. Money damages cannot be awarded in a UDRP proceeding.

If a party is dissatisfied with a UDRP decision, the dissatisfied party can commence litigation in court. A lawsuit in federal court is longer, more complex and can result in a decision either for the owner of the domain name or for the complainant to have the domain name. Furthermore, monetary damages can be awarded to either party. There is also a lower likelihood that attorney fees may be awarded to the winner of the litigation.

Each of these possibilities is discussed more thoroughly in different sections of this website. We will also be pleased to talk with you individually about your particular situation in order to determine the strength of your position, the strength of the opposition and your likelihood of success with any of the dispute resolution procedures. We provide initial consultations free of charge. We will be delighted to talk with you.

Below we provide a quick description of some better known domain name disputes to provide a more complete understanding of the types of cases and the results that occur in domain name disputes.

  • CandyLand.com - Hasbro Inc. is the maker of a child’s game called Candyland. An adult entertainment site first registered the domain name http://www.candyland.com. Understandably, Hasbro fought to acquire the domain name, fearing their young consumers might end up at an inappropriate site which might tarnish Hasbro’s name.

  • DellWebDesigns.com - Paul Dell registered DellWebDesigns.com and was sued by Dell Computers. Paul lives in Spain and operates a web design business. He registered the domain name in 2001. In 2002 Dell Computers contacted Paul and claimed rights to the domain name.

  • McDonalds.com - An author at Wired.com,lawsuits writing an article about the value of domain names purchased this domain name and asked for suggestions on what to do with it. McDonalds agreed to make a charitable contribution and was given the domain name registration.

  • Micros0ft.com - Originally registered by a company names Zero Micro Software. Microsoft filed a protest and the registration was suspended. Eventually the domain name registration expired and Vision Enterprises of Roanoke, TX picked up the registration. The registration expires in December 2007 and is listed as “Client Renewal Prohibited”.

  • mtv.com – An employee registered the domain name originally. MTV showed no interest until the employee was going to leave the company; at which time MTV wanted to control the domain name and sued in Federal Court. Registration was settled out of court for an undisclosed amount.

  • Nissan.com – Nissan Motors sued Nissan Computers for control of the domain name Nissan.com in 2005. Nissan Computers is run by Uzi Nissan. In 1994 he incorporated his company (which had been doing business using his last name “Nissan” since the 1980’s when Nissan Motors was still Datsun) and registered the domain name Nissan.com. In 1995. He received a letter for Nissan Motors just inquiring about his use of Nissan.com. In the same month he obtained a service mark registration for Nissan Computers. In 1999 Nissan Motors finally sued Nissan Computers for $10,000,000.00. In 2002 Nissan Computers won the right to keep the domain name registration but was severely restricted in its use. In August 2004 this restriction was lifted by an appellate court. Nissan Motors has appealed up to the U.S. Supreme Court but was not granted a "Writ of Certiorari".

  • Peta.org – This domain name was registered by someone providing a parody to the organization known as PETA (People for the Ethical Treatment of Animals). In the case of the domain name, “PETA” was purported to stand for “People Eating Tasty Animals”. Eventually a judge awarded Peta.org to People for the Ethical Treatment of Animals. PETA itself was not without controversy; the organization registered RinglingBrothers.com and used it to accuse Ringling Brothers of unethical treatment of circus elephants. Ringling Brothers sued and PETA turned over the domain name with the agreement that Ringling Brothers would drop its suit.

  • roadrunner.com – A Santa Fe, New Mexico Internet access provider (named RoadRunner Computer Systems) ended up with control of the domain name. NSI threatened to suspend the registration based on a complaint from Warner Brothers,and the access provider sued to prevent the suspension. Eventually through settlement (no details provided) Time Warner ended up with control of the domain name.

  • Wired.net – This domain name dispute was between Wired Magazine (who registered wired.com) and Women’s Wired (who registered wired.net). Wired magazine sent notice to Women’s Wired that wired.net infringed on their trademark. The two companies reached some type of amicable agreement and Women’s Wired now operates under WWired.com

 

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