Recent decisions condemning cyberpirates' registration of law firm names have given some domain name "entrepreneurs" reason to think twice before they squat. Rulings in cases brought by large law firms under the U.S. Anti-Cybersquatting Consumer Protection Act show that domain name pirates now have more to lose than just their cache of domain names -- they risk being assessed money damages.
The anti-cybersquatting law, enacted on November 29, 1999, permits an action to be brought against anyone who, with bad faith intent to profit, registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark, or that is identical, confusingly similar to or dilutes a famous mark.
The Act allows a court to order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. It also permits an award of statutory damages of up to US $100,000 per domain name.
Names are Not for Sale
The law firms Jones, Day, Reavis & Pogue and Morrison & Foerster LLP, in two separate actions, obtained permanent injunctions against Brian Wick, of Denver, Colorado, U.S.A. Mr. Wick registered the domain names of over 70 law firms in connection with a web site, www.nameisforsale.com. The site featured material that was disparaging to attorneys.
Jones, Day, Reavis & Pogue filed an action against Mr. Wick in the district court in Cleveland, Ohio, for trademark cyberpiracy, trademark infringement, dilution and deceptive trademark practices as a result of Mr. Wick's registration of the domain names jonesdayreavispogue.com and jonesdayreavisandpogue.com.
According to Robert P. Ducatman, a partner with the firm, the case was resolved very quickly. In less than two weeks' time, the firm obtained a permanent injunction ordering Mr. Wick to transfer the domain name registrations to Jones Day and enjoining him from registering any domain name that incorporates any two of the terms "jones," "day," "reavis," and "pogue." The order also contained a liquidated damages provision in the event that Mr. Wick should violate the injunction.
Morrison & Foerster was also successful in obtaining a permanent injunction against Mr. Wick in the district court in Denver, Colorado. The injunction required Mr. Wick to forfeit his interest in four domain names that either incorporated or misspelled the firm's name. In addition, Mr. Wick was ordered to transfer certain domain names to the firm.
Mr. Wick had argued that the right of free expression under the First Amendment to the U.S. Constitution protected his use of the Morrison & Foerster domain names as a parody. While the court found that the content of Mr. Wick's site may be entitled to some First Amendment protection, that did not extend to his use of the domain names.
$25,000 Damage Award
A separate group of law and accounting firms brought a suit under the anti-cybersquatting law and the Federal Trademark Dilution Act against Michael Moore and his company for registering the domain names debevoiseplimpton.com, fulbrightjaworski.com, kirklandellis.com, kpmgpeatmarwick.com, omelvenymyers.com, and sidleyaustin.com, recovering US $25,000 in damages.
The U.S. District Court for the District of Columbia in Washington, D.C., awarded Debevoise & Plimpton, Fulbright & Jaworski, Kirkland & Ellis, O'Melveny & Myers, Sidley & Austin, and KPMG the damages against Mr. Moore and his investigative agency, Moore Publishing Co., Inc. d/b/a EFBI and Dig Dirt, Inc. The court also permanently enjoined Mr. Moore from using the firms' domain names and ordered him to transfer the names to the respective firms.
The firms' complaint alleged that when Debevoise & Plimpton and Sidley & Austin contacted Mr. Moore objecting to the registration of their names, he offered to sell the domain names to them. The complaint also claimed that Mr. Moore diluted and detracted from the distinctiveness of the firms' trademarks by using the domain names to advertise his investigative services business.
According to Sheri Rabner, a Debevoise & Plimpton associate who worked on the case against Mr. Moore, "What makes this case unique is that it is one of the first cases filed under the Act where there has been an award of damages. The case shows that the Act has some teeth."
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