Tag Archives: Domain Issues

Domains By Proxy Lawsuits: Uncovering A DBP Customer

Domains By Proxy Lawsuits
Arizona-based company, Domains By Proxy, hides user information from public view. Can you subpoena them for information and get it?

Domains By Proxy Lawsuits

Have you ever tried to uncover a website owner using ‘Whois’ information, only to find ‘Domains By Proxy’ is the registrant? The discovery can be frustrating – especially if someone defamed you online and you want to go legal on their butt. After all, it’s tough to sue a person for defamation, infringement or dilution if you don’t know who they are.

It is possible, however, to uncover anonymous defamers who use privacy intermediaries, like Domains By Proxy.

Domains By Proxy 101

Domains By Proxy is a Delaware corporation, headquartered in Arizona and owned by hosting/domain giant, GoDaddy. DBP offers domain registration privacy services that shield customers’ names from public view. When a person uses Domains By Proxy, DBP’s information populates the “Whois” database, thus making it difficult to uncover the registrant’s true identity.

Domain By Proxy’s Definition Of Privacy

Domains By Proxy is not loved by all. Some folks feel the company talks a good game, but ultimately is a double dealer. Accusations of “malicious business activities including inducements to join their service,” have plagued the company for years. In addition, many detractors think DBP does a bad job of keeping customers’ data private.

Domains By Proxy’s policies, however, are clearly delineated in their terms. Section 4 of the DBP user agreement states the company has the “absolute right and power…without any liability to you whatsoever,” to either: (1) close your account and (2) reveal your name and personal information.

While Domain By Proxy’s less-than-private policies may be kryptonite to dastardly ne’er-do-wells, the company’s willingness to cooperate when a law is broken is beneficial to people who’ve been anonymously defamed online.

Domains By Proxy Lawsuit: Powermark Homes v. John Doe

Perhaps the most well-known Domains By Proxy lawsuit is Powermark Homes v. John Doe.

Mark and Lisa Powers owned and operated a real estate company called Powermark Homes, Inc. Like all companies, Powermark had an unsatisfied customer – an unsatisfied customer that decided to create a couple of “suck sites” about the Power’s venture.

When the Powers learned of the disparaging websites, they filed a complaint against John Doe and Domains By Proxy citing defamation, disparagement and invasion of privacy. In addition to the suit, the plaintiffs also sent DBP a DMCA takedown request and sought a temporary restraining order requiring the “defendants to remove the false and defamatory website.”  The Powers averred “the statements, allegations, pictures and other representations contained in the false Internet site are in many or most instances false and misleading against some of…the plaintiffs, and assert false allegations of fact which directly harm the reputation and public appearance of some or all of the plaintiffs.”

As is the DMCA process, DBP notified Doe of the DMCA takedown request. Doe then engaged in some pro se lawyering. Eventually a public citizen litigation group came to Doe’s legal rescue. Litigation ensued.

Ultimately, a judge granted Doe’s and DBP’s motion to dismiss the defamation case, because the Powers, according to the court, didn’t clearly delineate the nature of the defamation. That said, the Powers did succeed in getting the “suck sites” down via the DMCA. So, while they didn’t get any money out of Doe or DBP, they got the site removed from the Internet – which, in many cases, is all a defamation victim wants.

Powermark Homes v. Doe and Domains By Proxy was not a popular ruling. Many saw it as a clear cut example of how the DMCA can be used unfairly to silence critics. And, from a purely objective legal standpoint, that’s a fair assessment. But for someone looking to rid the ether of unflattering or disparaging comments, the DMCA can be a handy tool. Basically, it’s a problematic loophole-filled law, with good intentions.

Domains By Proxy Privacy Policy Explained (Last Revised 3/22/2013)

The beginning of Domain By Proxy’s privacy policy states the company “will not give any information about you to others without your express permission,” language in the middle, however, qualifies that statement. Further down the Domains By Proxy privacy policy, it states that they will provide “information about you to third parties to provide various services on [their] behalf.” These services include:

  1. Processing credit card payments;
  2. Serving advertisements;
  3. Conducting contests or surveys;
  4. Product and customer demo analysis;
  5. Shipping; and
  6. Customer relation management.

They also reserve the right to:

  1. Allow third party ad servers to “employ cookies and action tags to measure advertising effectiveness.”
  2. Supplement “the personally identifiable information you submit” to them “with information from third party sources.”

Domains By Proxy’s Stance On Giving Information When Subpoenaed Or Approached About A Lawsuit

Domains By Proxy clearly states that they may share information with attorneys, law enforcement officials or other legal bodies to “resolve any and all third party claims, whether threatened or made arising out of your use of a domain name registered by DBP on Your behalf.”

Other times when DBP says they will reveal your information:

  1. If you breech any provisions of the TOS or DBP anti-spam policy.
  2. Protect the integrity and stability of the applicable domain name registry.
  3. Comply with any subpoenas, court orders or requests from law enforcement.
  4. Comply with UDRP.
  5. “To avoid any financial loss or legal liability (civil or criminal) on the part of DBP, its parent companies, subsidiaries, affiliates, shareholders, agents, officers, directors and employees.”
  6. Domain name infringes on another’s intellectual property or “other legal rights.”

If DBP catches wind that you are engaged in any “illegal or morally objectionable activities including, but not limited to, activities which are designed to:”

  1. Appeal to prurient interests;
  2. Defame, embarrass, harm, abuse threaten or harass third parties;
  3. Violate laws;
  4. Promote hate crimes, terrorism and child pornography;
  5. Promote vulgar, obscene, invasive, privacy, racially, ethically or otherwise objectionable;
  6. Impersonate;
  7. Harm minors in any way;
  8. Spread an e-virus.

What If I Defamed Someone, And Canceled My Domains By Proxy Account Before The Person I Defamed Figures Out It Was Me?

Canceling your Domains By Proxy domain won’t help much if a potential plaintiff is on the hunt. The company privacy policy states, “when your Domain By Proxy account is canceled” (either voluntarily or involuntarily) all of your personally identifiable information is placed in “deactivated status on our relevant Domains By Proxy databases. However, deactivation of your account does not mean your personally identifiable information has been deleted from our database entirely. We will retain and use your personally identifiable information as necessary in order to comply with legal obligations, resolve disputes, or enforce our agreements.”

If A Plaintiff Gets The Government or Lawyers Involved, And You Genuinely Did Something Wrong, Expect Domains By Proxy To Give Up The Goods On You

Under Domain By Proxy’s “Compliance with Laws and Law Enforcement Section” it states:

“We will disclose any information about you to Government or law enforcement officials or private parties as we, in our sole discretion, believe necessary or appropriate to respond to claims and legal process (including without limitation subpoenas), to protect our property and rights of a third party, to protect the safety of the public or any person, or to prevent or stop activity we consider to be illegal or unethical. We will also share your information to the extent necessary to comply with ICANN’s rules, regulations and policies.”

In other words, if you genuinely defamed someone, ripped off intellectual property, or in some other way broke a state of federal law, Domains By Proxy may have no qualms about giving up the goods on you. That said, they’re known to follow DMCA standards, so if you file a nebulous – or flat out false – DMCA takedown request, don’t expect cooperation. More than that, if you do pursue a false DMCA takedown, you may be the one who ends up under a pile of debt, because false DMCA request laws exist.

In order for a claimant to open a dialog with DBP about seeking identifying information in service of a civil legal matter, a valid subpoena must be faxed, mailed or served to DBP at their Scottsdale, AZ headquarters.

If the issue is not an emergency, DBP won’t immediately hand over user data. They will alert the affected customer, giving them an opportunity to quash the subpoena.

Domains By Proxy also retains the right to “change an administrative fee” to the person or entity submitting the request, for costs associated with subpoena compliance.

If you need to unearth the identity of a Domains By Proxy customer, contact Kelly Warner Law. We’ve dealt with Domains By Proxy lawsuits and litigation before and understand the best way to work with the company. We’ll review your circumstances and advise you on the best way to move forward. If you’re serious about suing – or getting online material removed quickly – don’t dilly-dally, because defamation statutes of limitations, in most jurisdictions, aren’t long.

Libya Loses Cybersquatting Lawsuit

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Libya lost a cybersquatting lawsuit against an online marketer.

The country of Libya lost a cybersquatting lawsuit against Ahmad Miski. In November 2006, the Embassy of Libya filed a lawsuit with the United States District Court against Ahmad Miski for online trademark violations. Their position was that Miski violated the Anti-Cybersquatting Consumer Protection Act when he created a series of domain names, including embassyoflibya.org, libyaembassy.org, libyaembassy.com and libyanembassy.com.

Miski owns an Arab-American Chamber of Commerce that helps people get documents certified – a service not offered by the Arab Embassy. Miski employs a common Internet marketing tactic; he registers domain names and redirects users to his website called arabchamber.com – a practice, he says, that significantly increased his website’s Internet search rankings.

According to the Anti-Cybersquatting Consumer Protection Act, the trademark owner has to prove they posses a lawful trademark. In this case, the Embassy of Libya had to prove that the defendant unlawfully used a name with the intent to profit. Although they had no registered trademark, the Libyan Embassy used the Lanham Act to dispute the matter. The Lanham Act states that some unregistered trademarks are protected by the Anti-Cybersquatting Consumer Protection Act.

After the bench trial, the verdict was in favor of Ahmad Miski. The court decided the Libyan Embassy had no trademark rights when it came to the domain names in question. Libya was unable to prove that the Lanham Act should protect their trademark. Since people think of a physical location when they hear about the Embassy of Libya, it is not considered a brand or product. Plus, their consular services are different from Miski’s certification services. In the end, the court ruled that none of Miski’s domain names violated the Anti-Cybersquatting Consumer Protection Act.

As Miski’s lawyer explained, his choice of domain names did not infringe on anyone’s rights. Miski only uses the descriptive domain names as an effective marketing tool. It is an embassy’s job to legalize documents. While Miski is unable to legalize documents, he uses third party businesses to have documents legalized by embassies across the Arab world. For that reason, the plaintiff is not a direct competitor of the defendant.

Full bench trials are rare in cybersquatting court cases; however, the lawsuit did make it to trial. The district court judge ruled in favor of the defendant. Since the Libyan Embassy failed to prove that it has trademark rights, Ahmad Miski gets to retain control of his domain names.

Judge Rules To Protect Internet Trade Secret

Internet trade secret attorney and lawsuits
Google has won another trade secret legal battle.

Google has won another Internet trade secret legal battle. The online giant was embroiled in a legal tussle with both GoDaddy and The Academy of Motion Picture Arts and Sciences (a.k.a., the “Oscars” people). To be clear, neither GoDaddy nor AMPAS sued Google; instead, AMPAS filed a claim against GoDaddy over a cybersquatting/online intellectual property issue. Unexpectedly, the case ended up having a significant impact on Internet trade secret law.

Internet Trade Secret Showdown: The Academy of Motion Picture Arts and Sciences v. GoDaddy

You’ve probably seen GoDaddy “parked” sites before; they feature the infamous logo and ads. What you may not know, though, is that domain owners, who are enrolled in GoDaddy’s “CashParking” program, earn revenues off those ads. As such, domain parking has become a popular residual income stream for online marketers. Here’s the story of one.

The Story Of The Online Marketer Who Bought An “Oscar-Baity” URL?

To capitalize on online searches related to the annual Academy of Motion Picture Arts and Sciences Award Gala (a.k.a., “The Oscars”), one enterprising online marketer bought “oscarlist.com” and “oscarliveblogging.com.” During the Academy Awards seasons, owning those domains translated to significant residual revenues, via parked domain profits.

The Academy Doesn’t Like That Go Daddy “Profits” Off Their Name

When The Academy found out about the system, it wasn’t thrilled. The Oscar folks felt that the hosting company unfairly infringed on their online intellectual property rights by profiting off “parked” sites.

Enter Google

So how did Google get involved? Both GoDaddy and AMPAS were pointing fingers, saying that Google’s AdSense program is the real issue. AMPAS said it need to examine Google’s program to see if the company took precautions against intellectual property infringement, in addition to the revenue share calculations. GoDaddy, on the other hand, is tried to build an Anti-Cybersquatting Protection Act defense, arguing that Google is “solely responsible” for any inappropriate domain profit gain.

Judge’s Ruling

Despite the wishes of AMPAS and GoDaddy, Paul Grewal – a U.S. magistrate judge – ruled the Google discovery requests would be “burdensome” since the company routinely has to deal with third-party discovery demands. Specifically, the judge reasoned:

“AMPAS has not shown that the 4,000 pages of documents Google already produced does not provide the information it needs or why at least some of the additional discovery it wants was not obtained from GoDaddy or public sources.”

Bad Faith Intent To Profit In Cybersquatting Lawsuit

The crux of the AMPAS v. GoDaddy lawsuit is whether or not GoDaddy engaged in a program with a “bad faith intent to profit.” In online intellectual property cases, it’s usually not enough to say that someone is inappropriately using a questionable domain (though, there are exceptions). Plaintiffs in such cases need to prove that the defendant is somehow profiting off the alleged infringement.

There are many ways an attorney can argue profit loss, or potential profit loss, so it’s important to find a lawyer who has experience with Internet copyright litigation and Internet trade secret law.

Affiliate Marketing Legal Alert: Senator Unveils New Digital Marketing Bill

Internet Marketing Law
Sen. Schumer is proposing a new law that could affect affiliate marketers.

All affiliate marketers should take a moment to read Senator Chuck Schumer’s new Internet law proposal that seeks to raise fines on any entity that places calls to any number on the National Do Not Call Registry.

An aggressive piece of affiliate marketing law legislation, the bill seeks to raise fines and re-classify violations as felonies.

“Congress has enacted the laws to fight back against [robo advertising], but the companies are using new tricks, and now we must enact stiffer penalties to make sure the laws have teeth so the regulators can bring the rogue firms to heel,” Schumer explained to CBS news.

How The Proposed Act Could Affect Affiliate Marketers

Specifically, if the new bill is passed, anybody who places illegal robo-calls or digital messages will be fined $20,000 per call. Moreover, it would redefine DNCR violations as a felony, as opposed to a misdemeanor. And perhaps most alarmingly, Schumer’s proposal includes provisions for up to 10 years in jail for egregious violations. (The jails are already overcrowded. Is it really the smartest move to start throwing non-violent offenders into prison over something as non-threatening as unsolicited marketing?)

When being interviewed about his new bill proposal, Sen. Schumer opined that the punitive damages do little in the way of mitigating violations. Since the current codified DNCR fines are so low, he reasoned that businesses risk getting caught and rationalize the cost by figuring that the profit earned from breaking the law would outweigh any violation fines that could be levied.

Are Text Messages Subject To Do Not Call Rules?

Since the National Do Not Call Registry first popped onto the scene, there has been some confusion as to whether or not messages and texts to mobile devices were actionable under DNCR regulations. While there are a few exceptions, these days, the general rule of thumb is that any communication to any number – whether to a cell phone or land-line – is subject to do no call legislation.

Other Affiliate Marketing Laws & Regulations

In addition to Do Not Call legislation, every affiliate marketer, in order to stay on the right side of the law, should also familiarize themselves with the Dot Com Disclosures and FTC case law. Internet marketers who market children’s products must pay heed to the Children’s Online Privacy Protection Act; those who deal in finance services should familiarize themselves with the privacy provisions outlined in the Gramm Leech Bliley Act. And lastly, every affiliate marketer should make sure that they have the proper terms, privacy policies and disclaimers on their websites.

Get In Touch With An Affiliate Marketing Lawyer

The Kelly / Warner Law Firm was established to serve the needs of affiliate marketers and people who do business on the Web. Unlike other law firms, we know the digital world intimately. Not only are we AV-rated attorneys, but we’re also affiliate marketers. In fact, we’re such geeks that we even created our own legal app. If you work on the Web and are in need of an attorney who can address your legal needs quickly, efficiently and at the right price, give us a shout.

Click here to read more about Aaron Kelly – Internet lawyer and enthusiast.

An Interview With ICANN Brass: The Latest On The gTLD Rollout

The Wall Street Journal had a sit down with Akram Atallah, former CEO and current COO of the Internet Corporation for Assigned Names and Numbers (ICANN). They’re the folks who handle the global administration of domains. Generally speaking, you could say they’re the entity that makes sure each unique Web property has its own online address.The interview focused primarily on the opening of the generic Top Level Domain (gTLD) system, which will incorporate a slew of new top level domain options (i.e., .secure, .shopping, etc.) on the World Wide Web. While Atallah played his cards close to his chest, there are a few points worth noting.

When asked about the 1,930 gTLD applications filed this summer, in addition to the amount of objections and comments submitted, Atallah stuck to his talking points and was quick to point out that no objections have been filed to date. He went on to explain the difference between objections and comments; the former being a fee process that could result in the halting of an application, the later costs nothing and does not interfere with the application process. Mr. Atallah was also sure to remind that the commenting period has been extended until September 26, 2012.

ICANN’s Digital archery competition was also a topic of conversation. The COO explained that they initiated the program as a way to help determine the order of gTLD application processing, since there wasn’t a clear, fair way to establish who gets their domain implemented first, second, third, et cetera. Atallah went on to say that the program didn’t work, for the simple fact that participants hated it. As such, ICANN scraped the plan.

The interviewer touched on the controversies surrounding the registration of potential new genric Top Level Domains like .gay. Many religious groups – and free speech watchdogs alike – have been submitting dueling comments to express their opposing views as to whether or not certain gTLDs should be allowed. Sleathly, Mr. Atallah pointed out that ICANN does not have a directive to deal with such disputes, that’s the purpose of the partnerships with International Chamber of Commerce, WIPO and International Center for Dispute Resolution, Atallah explained. He went on to reaffirm that ICANN, for all intent and purpose, is simply an administrative body that carries out the regulations that the community decides on.

In closing, Atlallah was asked about ICANN’s plans to transfer functions to the International Telecommunications Union (ITU). He answered the question by first pointing out how well the ICANN system currently works, evidenced by how quickly and seamlessly the Web has grown in the past two decades. He then went on to indicate that ICANN was not invited to the annual ITU convention in Dubai this year, and that his team had yet to see any formal proposals. Atallah did say, however, that his organization is willing to consider ideas.

The new CEO is of ICANN is Fadi Chehade, who will most likely be overseeing the bulk of the gTLD process.

Are you in need of a lawyer to help with the generic Top Level Domain process? If yes, contact us today.

Puerto 80 Gets Their Seized Domains Back

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Spanish website company Puerto 80 is finally getting their seized domains back from the ICE after 20 months.

Looks like the U.S. Immigration and Customs Enforcement Agency (ICE) had a change of heart concerning a popular Spanish Internet company’s domains. Nearly 20 months ago, Puerto 80 – an umbrella corporation for the Rojadirecta family of sites – curiously had their Web properties seized; curious because the reason for the seizure was spurious at best. What caused the flip-flop? Judge Richard Posner.

We’ll Take Those Domains, Thank You Very Much

In January of 2011, online legal watchers were aghast that the ICE was able to seize the websites of a foreign company, while standing on a very shaky legal leg. The sites in question were the Rojadirecta .coms and .orgs, a community of sites for professional sports fans. They featured discussion boards and links to game streams.

What made the original domain takeover especially suspect was that despite a Spanish court’s ruling, which said the sites were not in violation of Spanish law, the U.S. government would not release the sites while awaiting an exploratory hearing. Puerto 80 reasoned in a legal filing, “The [U.S.] government has not shown and cannot show that the site ever was used to commit a criminal act, much less that it will be in the future. By hosting discussion forums and linking to existing material on the internet, Puerto 80 is not committing copyright infringement, let alone criminal copyright infringement.” Judge Paul Crotty, however, was not hearing it and explained his decision by focusing on Puerto 80’s ostensible ability to redirect customers easily: “Rojadirecta.com has a large Internet presence and can simply distribute information about the seizure and its new domain to its customers.” U.S. officials also made it clear to Puerto 80 that the only chance they had of getting their sites back was if they prohibited users from linking to any U.S. content.

U.S. Government Drops Claim After Posner Intellectual Property Ruling

After fighting to hold onto Puerto 80’s family of websites, last month, the U.S. government dropped their strangle hold with a terse memo:

The Government respectfully submits this letter to advise the Court that as a result of certain recent judicial authority involving issues germane to the above-captioned action, and in light of the particular circumstances of this litigation, the Government now seeks to dismiss its amended forfeiture complaint. The decision to seek dismissal of this case will best promote judicial economy and serve the interests of justice.

And it all had to do with a ruling handed down by one of America’s most respected jurists, Richard Posner. In the case of MyVidster v. Flava Works, Posner affirmed that embedding video was not copyright infringement. As such, federal officials had no choice but to release the Puerto 80 sites. After all, if case law in the United States does not back up the ICE’s assertion, there’s little legal ground for them to stand on.

It’s no secret that officials are looking to thwart online piracy by any means possible, but it looks like this time their plans were foiled by Judge Posner.

To keep up with the latest online intellectual property news, follow the Kelly / Warner blog — we’re Internet lawyers who spend a lot of time thinking about such things.

New Generic Top Level Domains On The Way For $25,000 A Pop

New generic top level domains on sale for $25,000
New generic top level domains are on the way. Expect an increase in domain dispute and procurement litigation.

Just when you acclimated to .com, .net, .org and .edu, a slew of new generic top level domains (gTLD) are on their way. And judging by the suffix request proposals revealed at a recent Internet Corporation for Assigned Names and Numbers (ICANN) London workshop, the new additions could alter the way we surf the Web.

More Descriptive gTLDs On The Way

According to reports, domain name endings could become more descriptive. For example, instead of going to StephenKing.com, in a few years, you may navigate to StephenKing.author. The change is expected to further compartmentalize the Internet – a fact that is bound to bring up various censorship, privacy and civil rights issues.

A process years in the making, ICANN has worked through technical glitches associated with the process and are now accepting applications from larger Internet companies bidding to control suggested gTLD additions. To illustrate, Google is looking to take over “.lol,” “.google” and “.YouTube,” while Artemis, a data security firm, is looking to lock-down “.secure.” Nearly 2,000 proposals were submitted including .doctor, .research, .music and .bank.

Generic top-level domains for various hobby groups, nationalities and sports are also expected to be incorporated into the domain naming conventions.

When Are These Generic Top-Level Domain Changes Going To Happen?

Don’t expect a different Internet overnight. Judging from past ICANN projects and the sheer enormity of this one, the roll-out won’t occur on a public scale for another two to three years…and that is if all goes according to plan.

Officials still must deliberate over trademark issues, international hate-speech considerations, not to mention the logistics of administering additional gTLDs. Besides, law enforcement entities need time to consider and implement new procedures as it relates to national security.

That all said, expect domain dispute and procurement litigation to heat up over the next several months, as competing bidders fight to gain control of highly prized options like .web or .startup.

Should Startups Consider Bidding On One Of These New Generic Top Level Domains?

Speaking of startups, if you’re a brand-new company looking to join in on the gTLD bidding fun, you may want to slow your roll – unless, you have $200,000 lying around to spend on a proposal. (That’s right, just the proposal; you have to pay them to write a proposal; and there’s no guarantee your wish will be granted.) If a company’s proposal is approved, they will have to shell out approximately $25,000 to maintain the gTLD and commit to a 10-year contract. In laymen’s terms, let’s just say you could buy “onlinemarketing.web” through GoDaddy; instead of it costing $10 – $1000, it would cost $25,000 – and with a required 10-year commitment, it may not make sense for a startup to commit to such a hefty debt from the jump.

If you have a legal domain issue, contact Kelly / Warner law. We have vast experience in the field and can help remedy your situation as quickly as possible. Contact us today to get started.

UDRP Case Study: iPhone5.com

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Apple emerged victorious in a UDRP law case.

Historically litigious tech powerhouse, Apple, has quietly won another legal victory. This time, the mega-corp wrestled the domain iphone5.com via the Uniform Domain Dispute Resolution Policy (UDRP).

History of the Apple UDRP Case

An Apple enthusiast registered the domain in 2008. For four years, the website operated as a forum dedicated to all things iPhone and Apple. As of this writing, iPhone5.com is down and the WIPO page indicates the case has been “terminated” – meaning the UDRP panel voted to give Apple the URL rights.

Is It Legal For A Large Company To Take A Domain From Someone Who Legally Bought It?

You may be asking: Is it legal for businesses to force private citizens to relinquish domain names without compensation? Like many legal questions, the answer is not simple and largely depends on the circumstances. The domain registration date, name of the URL and method by which one uses to take action – either through a copyright infringement lawsuit or through the World Intellectual Property Organization – are all factors.

How The iPhone5.com Domain Dispute Started

Back in 2008, a webmaster purchased iPhone5.com. The site was set up as a forum; Apple enthusiast used it to discuss the latest and greatest “genius” news and products. To avoid any confusion, iPhone5.com featured a prominent disclaimer explaining the owners and operators of the site were in no way affiliated with Apple.

Everything was going along great for a few years; then Apple started getting closer to releasing the fifth-series version of their celebrated iPhone (at the time of this writing, the latest version of the iPhone to be released is 4S). As such, the tech corp apparently decided it was time to take control of the iPhone5.com webpage (which could be an indicator that the next version of the mobile device will be #5 as opposed to a variant on #4).

Apple & The World Intellectual Property Organization: A Domain Dispute History

As they have in the past, Apple opted to use the Uniform Domain Dispute Resolution Policy (UDRP)  – a legal intellectual property framework developed by ICANN and administered by the World Intellectual Property Organization. Voluntarily adopted by most Western and Asian countries, UDRP is essentially a binding arbitration process meant to govern “abusive domain registration.”

The Uniform Domain Dispute Resolution Policy can be used by anybody with an intellectual property domain dispute. Whether you’re an individual with a single domain, or a multi-million dollar conglomerate, UDRP rules do not change.

If you lose a UDRP case, in the majority of cases, you will not be compensated financially for your old domain.

If the below domain dispute factors apply to your situation, you can file a UDRP claim through the WIPO.

  1. The domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
  2. The domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
  3. The domain name has been registered and is being used in bad faith

Domain registrars, however, cannot be targeted in a UDRP proceeding.

How Long Does The UDRP Process Take And How Much Does It Cost?

The entire UDRP process usually takes between two to three months, and the cost depends on the number of panelist that review the case and the number of domains you want reviewed. A review by one panelist reviewing one domain will cost approximately $1,500; a review by three panelists reviewing up to ten domains will run you around $5,000. (Conversely, a consultation with an Internet intellectual property attorney who can tell you the best course of action for your particular domain dispute situation will run you about $275.)

What Is The Difference Between Filing a UDRP Claim and Filing A Copyright Infringement Lawsuit? Which Is The Better Course Of Action?

Are you wondering if it’s better to file a UDRP claim or a copyright lawsuit to settle a domain dispute? Well, it truly depends on the nature of the case. How long have you had your domain? Is it associated with an already registered copyright? Do you own the rights of said copyright?  What are the circumstances surrounding your opponents claims to the domain? These are all questions a UDRP lawyer will look at.

Situations that clearly satisfy the three points above are ideal for the WIPO process. That said, if you’re not comfortable with legalese and procedures, it’s best to have an Internet attorney assist with the claim. Remember, the UDRP process is a legal one – and missed check-boxes or supporting material could delay matters considerably.

The UDRP process is a legal one – and missed check-boxes or supporting material could delay matters considerably.

If, however, your domain dispute does not fall squarely into one of the three categories above, it may be best to first consult with an intellectual property lawyer who understands domain disputes. Who knows, your situation may be such that you can clear up the whole matter without either the WIPO or a lawsuit.

For financial reasons, those targeted by a UDRP claim may want to contact an expert. Why? As stated above, if you you end up on the “receiving” end of a WIPO inquiry, there’s a good chance you will not be financially compensated for your lost URL. An attorney, however, may be able to broker a settlement deal.

Kelly / Warner is well-versed in domain dispute litigation. As a practice that focuses on Internet law, we know all the ins-and-outs, dos-and-don’ts of the Uniform Domain Dispute Resolution process and online intellectual property law. Contact our domain dispute lawyers to begin the conversation.

Government Seized Website Dajaz1.com Without Evidence

Government Seized Website Dajaz1Court documents show the US government seized website Dajaz1.com for more than 13 months despite a glaring lack of evidence.

Federal authorities released documents related to the government seizure of hip-hop site Dajaz1.com. Papers show that the seizure was extended for several months because the Recording Industry Association of America (RIAA) couldn’t provide information about the alleged copyright infringements. No charges were ever brought against Dajaz1.com, and the website eventually returned to the Internet.

The documents discussing the government seizure of DaJaz1 were held secretly for over six months, but released after public interest agencies requested the papers.

Government Seized Website DaJaz1: Federal Possession & Investigation

Dajaz1.com was shut down by Immigration and Customs Enforcement (ICE) in 2010. ICE is a division of homeland security. The original shutdown is allegedly related to the posts of four tracks that had not yet been released. The owners of Dajaz1.com and the attorney for the website suggested that the pre-release tracks were given to the site by members of the RIAA.

Both the government’s and the RIAA’s actions in this case are questionable. First there is the government seizure of the website. This seizure was based on information that the RIAA provided government authorities. However, the RIAA failed to follow through with their allegations, and no evidence was supplied to show that Dajaz1.com actually violated any laws. The government proceeded secretly and refused to return the properly of the site’s owners or provide evidence to support their seizure.

Government Seized Website DaJaz1: Returns To Internet After Insufficient Evidence Of Wrongdoing

In December, 2011, the Federal Government finally allowed Dajaz1.com to return to the Internet. Until now, the reason why the government seized the website for so long was a mystery. Documents now show that ICE received two secret extensions for the seizure. The government granted the extension while awaiting evidence of wrongdoing from the RIAA and other parties involved in the copyright disputes.

This case raises serious concerns and leads many to wonder just how effective the 2008 PRO IP Act really is. Ultimately, the statute allows the federal government to seize any website; they can shut down and seize Internet pages without any evidence of wrongdoing.

As of today, ICE has an ongoing operation called Our Sites, which has seized more than 750 websites. The federal government also maintains it has the authority to seize and shut down any website that ends in .com, .net or .org — even if the site is hosted outside of the United States.

Comparing DMCA and SOPA

Copyright Law Summary
Comparing DMCA and SOPA: What's the same and what is different?

SOPA is the big online copyright legal story of the year thus far. Which got me thinking about the good ‘ole Digital Millennium Copyright Act (DMCA) — the current work-horse of Internet intellectual property law.

In this article we’ll briefly review each bill. So grab a cold one and settle in as we de-construct the various intellectual property laws currently in the news and try to make sense of it all in plain English.

Comparing DMCA and SOPA: What the Heck is DMCA, Anyway?

DMCA, for those of you who don’t obsessively follow the law, is the Digital Millennium Copyright Act. Thanks to anti-circumvention statues in the bill, the DMCA is the US copyright law that makes it illegal for you or I to manufacture devices or services meant to access or reproduce copyrighted material.

It’s also the law that outlines the legal steps one should take if they feel their copyrights are being infringed upon.

Comparing DMCA and SOPA: Enter SOPA, Y’all

On October 26, 2011, the Stop Online Piracy Act (SOPA) was introduced as a US bill by Texas (R) Rep. Lamar S. Smith. The bill’s purported original intention was to round up and remove rogue websites from the Internet’s virtual “phone book.” If a site was targeted as “rogue,” the act, as it was written, would make it legal to quickly remove the site from the domain name system — and poof, gone! Now you see ‘er, now you don’t.

Lamar’s plan also included, if necessary, the issuance of court orders to keep payment facilities and advertisers from doing business with the likes of Google, Wikipedia, Facebook. Under SOPA, they would be forced to remove any links to offending websites that allowed any copyright infringing. If they continued to link to those websites that harbored the infringing material, they’d be in danger of being closed down and prosecuted, too.

Comparing DMCA and SOPA: One Bad Apple Don’t Spoil the Whole Bunch!

If one bad apple infringes upon copyrighted material and posts it on a website, the DMCA currently allows “safe harbor” protection to Internet sites from any liability based on the actions of that one bad apple. With that in mind, opponents to SOPA claim the proposed bill threatens innovation and free speech. The enforcement of the laws would block access to entire Internet domains because of one posting on a blog or webpage.

Even libraries have expressed concern that they could be exposed to prosecution. The specters of First Amendment violations and censorship suddenly arise.

You Say You Want a Revolution: Anti-SOPA Day

On January 18, 2012, Reddit, Wikipedia and 7,000 of their closest website friends either closed their doors or otherwise illustrated their protest of the SOPA. They did so with protest banners on their websites in an effort to raise public awareness.

On January 19, self-proclaimed members of Anonymous (a “hacktivist” group) imposed their wills and skills on several pro-SOPA websites like RIAA, CBS.com and more. They shut those bad boys down or slowed them up a bit with denial of service attacks in retaliation for the D.o.J. (Dept. o’ Justice) shutting down Megaupload on that same day.

SOPA: The Post Script

To clarify, rectify and mollify, an aide to Rep. Lamar Smith insisted that an individual posting a video on YouTube of their adorable child adorably singing a copyrighted song would not be considered a felon. Suspiciously, however, the aide did not address the issue of singing parrots, a burning question on the minds of many.

In December, 2011, both bills were tabled indefinitely. It would appear that intellectual property rustlers and renegade rogue websites will have their way with us for now. The DMCA, the prevailing law of the land, will have to stand on its own as the sole guardian to our intellectual property. If history has taught us one thing, however, it is that eternal vigilance is our duty. While it certainly is our God-given right to be naive, it only makes us look bad. Keep your eyes to the skies, the rogues are out there.

Just Because ICANN….

ICANN
ICANN Changes on the way?

When there’s no reason whatsoever for a younger brother to annoy the crap out of his older sister, he might tell you he doesn’t know why he annoys her. Yet, deep down in the depths of his being he annoys his sister thinking, “Just because I can.” Sound familiar?

Let’s take that “Just because I can” mentality to a global level.

The Internet Corporation for Assigned Names and Numbers (ICANN) has opened the door – some think Pandora’s box – to expanding the number of top-level domains (TLD) from 22 to, well, a number that hasn’t been fully determined. ICANN opened the TLD registration evaluation process on January 12, 2012 on their TLD Application System, requiring applicants to pay a $185,000 application fee. The deadline for submitting TLD applications to ICANN is April 12.

Putting things in perspective, ICANN’s introduction of .xxx as a TLD won’t hold a candle to magnitude and scope of all the possible TLD’s that could arise. New TLDs could consist of almost any word, phrase, brand, etc.. Aside from things that are generally considered offensive, dropping $185,000+ for a new, unique TLD might be good for bolstering a company’s brand.

But, then again….

More TLDs, More Competition?

Part of ICANN’s rationale for offering more TLDs is to promote competition that will provide “dramatic expansion” to the Internet. That’s not how some Internet experts and the Federal Trade Commission (FTC) see it. Many, including the FTC, are of the opinion that expanding the number of TLDs won’t create the kind of competition ICANN intended. Instead, many expect the dramatic expansion of opportunities for cybersquatters, scammers, phishers, and others who make life difficult on the worldwide web to create problems for legitimate businesses.

Businesses having to compete for their own brand by adding one or more additional domain suffixes to their collection is competition that plays well into the hands of domain registrars.

Remember what happened when .xxx hit the scene and became a TLD? Companies had to shell out big bucks to keep their image family friendly by registering their .com, .net, or .org names with a .xxx. Businesses that didn’t register their .xxx domain and fell victim to a fast-acting cybersquatter could face a huge legal battle to keep their business from having their trademark tarnished by being associated with an adult-themed website.  Throw more TLDs into the mix and you can only imagine what kind of fight you’d be in if you had to fight for your business’ .[fill in the blank] – especially for multiple TLDs.

If that weren’t enough, ICANN added another dimension for consideration to domain registrants. The Latin alphabet has company. Under ICANN’s new release of TLDs, domain names can have Arabic, Chinese, Cyrillic, or other characters. That means your business will have to scour the internet for copycat domain names in different alphabets.

Is that the kind of competition your business can afford?

The FTC, Compliance, and ICANN

The FTC asked ICANN to implement certain safeguards to protect consumers from fraud and scams before opening the new TLD registration period. Safeguards including:

  • Ensure Whois data is accurate in order to verify the identity of those registering TLDs.
  • Fortify their compliance program.
  • Implement a program to identify risks to consumers while evaluating TLDs.

We’ll see how ICANN reacts as the TLD registration process continues to unfold.

If you’re concerned about what new TLDs will do to your online business, speak with an experienced Internet lawyer to help you understand the implications ICANN’s TLD expansion.

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