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Take Action Against Domain Names that Infringe Your Trademarks

By Stephanie Robinson

U.S. businesses facing the misappropriation of their trademarks in the form of Internet domain names registered by third parties have a quiver-full of powerful remedies to obtain relief from such practices. In addition to ?traditional? trademark actions in cases where the third party is using a confusingly similar domain name in connection with products or services similar to those offered by a trademark owner, U.S. law also offers significant ammunition against third parties who register names and then ?squat? on them, without ever using the names in connection with the offering of any goods or services. Under the Anticybersquatting Consumer Protection Act (ACPA), trademark owners may sue such third parties in federal court to obtain both an injunction requiring the transfer or cancellation of the infringing domain name or names as well as actual damages or, at the mark owner?s election, statutory damages up to $100,000 per name, in the court?s discretion. However, in many cases the registrant of an infringing domain name may be located in a foreign country and not subject to the personal jurisdiction of a U.S. district court in an ACPA proceeding. Under those circumstances, the ACPA provides for proceedings in rem, which are, in effect, lawsuits against the domain names themselves. In that type of proceeding, the trademark owner files suit in the U.S. judicial district where either the domain name registrar (e.g., GoDaddy.com or Network Solutions) or the domain registry (e.g., VeriSign for .COM and .NET domains) is located. Following notice to the registrant and to the registrar or registry, the court then makes a determination as to whether the domain name infringes the trademark owner?s rights and, if the mark owner prevails, issues an order compelling the registrar or registry to cancel or transfer the name. In addition, the 9th Circuit Court of Appeals recently confirmed what appears to be the plain language of the ACPA by affirming that in rem actions pertaining to .COM and .NET addresses (which often are the top-level domains most frequently the subject of ACPA suits) may be brought in the Northern District of California, where VeriSign is located. This decision makes it easier for many trademark owners to consolidate their domain recovery efforts in one venue, rather than filing suit in districts where individual registrars may be located. If your business has discovered infringing uses of its trademarks in third-party domain names, you should consult with knowledgeable intellectual property counsel to determine whether one or more ACPA actions may be appropriate as part of a comprehensive IP enforcement strategy.

Full post as published by Business and Technology Law on May 24, 2010 (boomark / email).