Domain Name Disputes

The Internet is indeed a double-edged sword. While legitimate business owners have gained a nimble medium in which to promote their goods and services, predatory third parties are hard at work to develop new ways to interfere and poach. As a result, the laws pertaining to the Internet are evolving as rapidly as the medium itself. Our lawyers are well-versed in the tactics these predatory third parties use and the latest legal developments available to you and your company.

Some of the wide-ranging Internet-related services that the attorneys at TKLG provide include, drafting and negotiatingweb site development and hosting agreements, joint marketing and co-branding agreements, registering domain names and docketing deadlines for renewal, monitoring third-party uses of our clients’ trademarks and copyrights, policing counterfeits of our clients’ products, drafting cease and desist letters and, where appropriate, instituting litigation.

When our clients find that someone has registered the domain name equivalent of their brand or product name, we can file a Uniform Dispute Resolution Proceeding (UDRP) to recover the domain name. We have recovered numerous infringing or disparaging domain names from these “cybersquatters” who attempt to capitalize on our clients’ trademarks and brand names.

Since prevention and detection are the keys to avoiding disputes, we also work with clients to develop sound Internet strategies and policies for their businesses. The attorneys at TKLG can advise your company about key word advertising issues, copyright misuse, domain name registration protocols and strategies that will insulate your company and portfolio.

Representative Cases:

The founder of TKLG, Brian P. Kinder, has litigated many high-profile domain name disputes over the course of his career. Many of the precedent setting decisions that Mr. Kinder has obtained on behalf of his clients have subsequently been cited numerous times as precedent in later cases.  The following is a representative sample of some of the more noteworthy cases handled by Mr. Kinder:

Defy Media v. Virtual Point (WIPO Case No. 2015-1249) [addicting-games.com]: When a well-financed company (successor to Viacom) filed a UDRP action with WIPO in Geneva, Switzerland, Mr. Kinder contacted the company’s in-house counsel and offered them an opportunity to withdraw the complaint before he filed his response.  When they refused, Mr. Kinder defended the action and proved that the other side was using the UDRP process in bad faith and attempting to take by force what was not rightfully theirs.

City Title Loan, LLC v. Bellnames Privacy Protection Service (WIPO Case No. 2012-2021) [cityloan.com]: After filing a comprehensive complaint before the World Intellectual Property Organization in Geneva, Switzerland, Mr. Kinder successfully negotiated the immediate transfer of the domain name.

Diamond Mattress Company, Inc. v. Diamond Mattress (WIPO Case No. D2010-1637) [diamondmattress.net] and [diamondmattress.org]: When a customer registered the domain name equivalent of a client’s brand name, Mr. Kinder coordinated a legal strategy that firmly, yet respectfully, took back what rightfully belonged to the client. The relationship with the client was preserved while maintaining the client’s rights.

Gilead Sciences v. Kumar Patel (WIPO Case No. D2005-0831) [gilead-sciences.com] – In this UDRP proceeding, a sophisticated cybersquatter had registered the hyphenated domain name equivalent of the names for several high profile companies, including many in the pharmaceutical industry. The cybersquatter attempted to create a First Amendment defense relating to Freedom of Speech by creating a website that featured highly inflammatory (and wholly untrue) statements concerning the target companies. Despite lawyers for other companies being unsuccessful in their efforts to recover the domain names, TKLG founder Brian Kinder created and implemented a sophisticated research strategy to gather evidence demonstrating bad faith registration and use (as opposed to a legitimately aggrieved and legitimate free speech issue). The domain name was ordered transferred to the client.

Crystal Cathedral v. Ed Stuivenberg (World Intellectual Property Organization) Case No. D2002-0102 [thehourofpower.com]: A cybersquatter registered the domain name equivalent of a religious program broadcast throughout the world. He then put up a pornographic website in an effort to extort a quick settlement. Instead, Mr. Kinder quickly and inexpensively obtained a transfer order on behalf of the client.

Domain Name Laws

15 U.S.C. § 1125. Cyberpiracy prevention. “(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person – (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii) registers, traffics in, or uses a domain name that – (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a trademark, word, or name protected by reason of 18 U.S.C. § 706 or 36 U.S.C. § 220506.

(B)(i) In determining whether a person has a bad faith intent, a court may consider factors such as, but not limited to: (I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct; (VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct; (VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of section 43(c)(1).”