Pollard PLLC is a litigation boutique focused on competition law. The firm and its attorneys have extensive experience litigating a variety of unfair competition matters, including various trademark claims and other claims under the Lanham Act.
The firm prosecutes and defends against claims for Lanham Act violations, including trademark infringement, trade dress infringement, trademark dilution, false advertising, and cybersquatting.
As the internet dominates global commerce, it has become a flashpoint for intellectual property disputes. Cybersquatting, a form of virtual extortion, is now at the forefront of intellectual property litigation.
Relying on its extensive experience in intellectual property litigation, from trademark infringement prosecution to cybersquatting defense, Pollard PLLC is equipped especially for cybersquatting litigation.
Cybersquatting
Cybersquatting, or domain name poaching, occurs when an extortionist registers domain names with the bad faith intent to profit off of the goodwill associated with another’s trademark. Typically, cybersquatters register domain names that consumers associate with large, profitable companies and then demand that those companies purchase the domain names at inflated prices under the threats of lost business and devalued intellectual property. Cybersquatters also sell advertisements on these domain names to profit from the traffic of consumers attempting to find the company’s actual website.
Cybersquatters generally attempt to register domain names before the companies have an opportunity to. Alternatively, cybersquatters will register variations of popular trademarks with the intent to profit off of consumer confusion; this version of cybersquatting is called typosquatting.
The Anticybersquatting Consumer Protection Act
Added to the Lanham Act in 1999, the Anticybersquatting Consumer Protection Act (“ACPA”) establishes a cause of action against cybersquatters for registering, trafficking in, or using a domain name with the bad faith intent to profit from the goodwill associated with another’s trademark.
The Act prohibits registering, trafficking in, or using a domain name that is identical or confusingly similar to a mark that is famous or distinctive at the time the domain name is registered. If the mark is famous at the time of registration, however, the domain name need not be confusingly similar or identical so long as it’s existence dilutes the mark’s value.
What a litigant must show and how courts analyze cybersquatting claims differ from jurisdiction to jurisdiction, but there is substantial overlap. In Taverna Opa Trademark Corp. v. Ismail, Case No. 08-20776 (Southern District of Florida, 2010), for example, the Southern District of Florida explained that the ACPA defines cybersquatting as (1) registering, using, or trafficking in a domain name (2) that is identical or confusingly similar to a distinctive or famous trademark (3) with the bad-faith intent to profit from the mark’s goodwill.
Success on a cybersquatting claim being dependent on a finding of bad faith, the court in Taverna Opa set forth the following ACPA factors that courts consider when deciding whether bad faith is present:
- The presence of a trademark or other intellectual property in the domain name;
- The presence of a person’s legal or commonly used name in the domain name;
- The registrant’s prior use of the domain name in connection with the honest offering of goods or services;
- The registrant’s bona fide noncommercial or fair use of the mark;
- The registrant’s intent, either for commercial gain or to damage the mark, to divert consumers from the mark owner’s site to the registrant’s site that could harm the goodwill represented by the mark by creating a likelihood of confusion about the source, sponsorship, affiliation, or endorsement of the site;
- The registrant’s offer to sell, transfer, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, intended to use, or demonstrated an intent to use the domain name in the bona fide offering of goods or services;
- The registrant’s use of material and false or misleading contact information when applying for the domain name’s registration, the registrant’s intentional failure to maintain accurate contact information, or the registrant’s previous action indicating a pattern of such conduct;
- The registrant’s acquisition of multiple domain names that the person knows are identical or confusingly similar to distinctive or famous marks, or dilutive of famous marks, that are distinctive or famous at the time the domain names are registered, without regard to the goods or services of the parties; and
- The extent to which the mark incorporated in the registrant’s domain name is or is not distinctive and famous.
In Taverna Opa, the Florida Greek restaurant chain Taverna Opa sued a former employee who left the company and registered a domain name that was confusingly similar to the restaurant’s. Once registered, the former employee used the domain name to advertise for a competing Greek restaurant. Ultimately, the court in Taverna Opa found that the case’s facts established cybersquatting liability. In particular, the court explained that the defendant’s attempt to maintain anonymity when registering the domain name, the attempt to sell the domain name to the plaintiff for $25,000, and the advertising for a competing restaurant all weighed in favor of Taverna Opa.
Remedies
Because the ACPA falls under the Lanham Act, litigants have a variety of remedial options, including both legal and equitable avenues toward relief. Pollard PLLC uses its litigation experience to determine which remedies best suit our clients’ needs.
An ACPA litigant can attain either preliminary or permanent injunctions; federal courts have the power to order the forfeiture, cancellation, or transfer of a domain name involved in a cybersquatting dispute.
Moreover, the ACPA contemplates a multitude of damage calculation theories:
- The defendant’s profits;
- The plaintiff’s damages;
- The damages prescribed by statute (i.e., $1,000 to $100,000 per domain name);
- The cost of the action;
- The award of treble or punitive damages for intentional or willful violations;
- The award of attorneys’ fees.
Pollard PLLC leverages its experience litigating Lanham Act violations to identify which of the available remedies best solves our clients’ problems and tailors its litigation strategy accordingly.
Administrative Proceedings—The Uniform Domain-Name Dispute-Resolution Policy
In addition to a lawsuit under the ACPA, cybersquatting disputes can be handled through the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”), an arbitration-like proceeding. Domain name registrars, the companies that provide domain name registration services to the public, are accredited by the Internet Corporation for Assigned Names and Numbers (“ICANN”). All registrars must follow the UDRP and, by registering, all registrants must assent to UDRP resolution.
With our extensive experience litigating intellectual property disputes and engaging in alternative dispute resolution processes, Pollard PLLC determines the best arena for solving our clients’ problems. When the UDRP provides the surest avenue toward success, the firm utilizes those processes to secure the cancellation or transfer of the disputed domain name. Otherwise, the firm litigates cybersquatting claims under the ACPA in any court available and at all levels, trial and appellate.
Representative Matters
Pollard PLLC has litigated numerous complex Lanham Act claims, including:
ESP Systems, LLC v. Nightingale Nurses, LLC, Case No. 16-81263 (Southern District of Florida, 2017) (prosecuting Lanham Act claims for false advertising in the medical staffing industry)
Racing Sports Concepts, LLC v. Dickinson et al., Case No. 13-20428 (Southern District of Florida, 2013) (prosecuting Lanham Act claims for false advertising and trademark infringement in the aftermarket auto parts industry)
In the News, Inc. v. Controneo, Case No. 15-CA-009602 (Florida’s Thirteenth Judicial Circuit – Hillsborough County, 2016) (defending against Cybersquatting claims in litigation between rival media companies)