Wilson Whitaker Rynell

Experienced Lawyers

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DOMAIN NAME DISPUTES & LITIGATION ATTORNEYS, DALLAS, TEXAS.

Our IP attorneys prosecute and defend Cybersquatting and domain name disputes in federal and state court, as well as administering complaints through the UDRP.

DOMAIN NAME LITIGATION AND UNIFORM DISPUTE RESOLUTION POLICY (UDRP)

DOMAIN NAME DISPUTE SERVICES AND CYBER-SQUATTING LAW


What is a Domain Name Dispute? 


A domain name dispute arises when two or more parties each believe they each have the right to register or use a specific domain name. Most domain name disputes occur when a domain name is filed or registered in the United States Patent and Trademark Office (USPTO) that is similar to another trademark owner.   Our IP trial attorneys represent plaintiffs and defendants in various types of trademark litigation, domain name litigation, and domain name disputes. 


What is Cyber-Squatting? 


Cyber-Squatting is the practice of registering names, especially well-known company or brand names, as Internet domains, hoping to resell them as a profit. The Anti-cybersquatting Consumer Protection Act (ACPA) established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name.  Suppose a domain squatter blocks the rightful owner of a trademark or brand from acquiring the domain name or creates domain names that are confusingly similar to that of the rightful owner of a trademark or brand. In that case, the law provides specifics legal remedies. The ACPA is codified in federal statutes as part of trademark law.  Our lawyers represent plaintiffs and defendants in intellectual property litigation in federal and state courts. 


Domain Name Litigation and the Uniform Dispute Resolution Policy (UDRP)


Domain name disputes can be resolved in federal or state court by filing a domain name litigation lawsuit and/or by filing a trademark opposition or trademark petition to cancel in the USTPO in the event the domain is being registered as a trademark.   Another option is to use the international arbitration system established by the Internet Corporation of Assigned Names and Numbers (ICANN) to request the transfer of the domain name to you. The ICANN international policy for resolving domain name disputes is known as the Uniform Domain Name Dispute Resolution Policy (UDRP). All domain name registrars must follow the ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP). Our domain name litigation attorneys have experience prosecuting and defending domain disputes in court and arbitration.


While the UDRP does not directly prohibit anticipatory cybersquatting, it is the most expedient means of removing offending domain names from anticipatory and actual cybersquatters. Unlike the ACPA, the UDRP does not require that the protected domain name or trademark be distinctive or famous at the time of registration. 


Dallas Domain Name Litigation Lawyers



Our Dallas domain name and cyber-squatting litigation attorneys have earned a reputation for aggressive, responsive, efficient, and most importantly, successful litigation. While we are prepared to take every case to trial, we know from our clients' perspective that often, the best litigation is the one that settles in mediation. Our straight forward unbiased guidance can help you avoid litigation whenever possible. However, if needed, our litigators are skilled in negotiation techniques and have a reputation for achieving very favorable results for our clients both in-court and out-of-court. 



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Additional Domain Name Litigation Focus 

What is the Anti-Cyber Squatting Consumer Protection Act?



The Anticybersquatting Consumer Protection Act (ACPA) is federal legislation that established a legal cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. Under the ACPA, a trademark owner may bring a federal cause of action against a domain name registrant who, with bad faith intent to profit off a mark, registers, traffics in, or uses a domain that is:

 

  • identical or confusingly similar to a distinctive mark;

 

  • identical or confusingly similar to or dilutive of a famous mark; and

 

  • is a protected trademark 18 U.S.C. § 706 (Red Cross) or 36 U.S.C. § 220506 (Olympics).

 

In determining whether the domain name registrant has a bad faith intent to profit, courts consider a wide breadth of factors; however, the statute outlines the following nine elements to distinguish abusive domain name registrations from legitimate ones:

 

  • the trademark or other intellectual property rights of the person, if any, in the domain name;

 

  • 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;

 

  • the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

 

  • the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

 

  • 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;

 

  • 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;

 

  • 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;

 

  • 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 the 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

 

  • the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous.

 

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