Law Office Management
Dec. 2, 2010
Trademark Trespassers
Cybersquatters turn IP attorneys into URL police.
In response to cybersquatters who hijack the online presence of popular brands, intellectual property lawyering on the wild, wild Web has taken a strategic turn. "Early on, we concentrated on securing [website] domain names on a proactive basis, but now we are spending more time on a defensive basis," says Monique Cheng Joe, senior counsel for NBC Universal who helps oversee the corporation's trademarks. The practice of effectively holding a Web address hostage through cybersquatting isn't new, but attorneys are increasingly taking on the role of Internet cop, defending trademarks through legal or administrative remedies in both local and global venues. The labyrinthine practice of online trademark defense may soon become even more complex, given an initiative before the Internet Corporation for Assigned Names and Numbers (ICANN), which oversees American domain names. The idea is to enable the introduction of unlimited Web address suffixes, known in geek-speak as generic top-level domains. (Current examples include .com and .org.) If approved, the overall number of websites likely will mushroom. "Whatever ICANN does over the next two years, the legal issues that surround domain names will be a steady source of referrals for trademark lawyers everywhere," observes Alan C. Drewsen, executive director of the International Trademark Association in New York. A long-standing ploy of cybersquatters involves registering and then selling coveted website addresses. But that's not necessarily against the law, and the most expensive legitimately acquired address to date - Insure.com - went for $16 million in 2009. More legally problematic are the operators who buy, in bad faith, domain names that are confusingly similar to established brands, with the intention of either siphoning Web traffic from a corporation or redirecting consumers to counterfeit portals. "Typosquatting," which targets poor spellers, also causes headaches. Another revenue-generating ploy by what appear to be professional cyberhucksters is to concoct fraudulent pay-per-click ads. "If [cybersquatters] rip off one famous brand, generally they're ripping off a lot of them," says Holly Pranger, who runs a boutique IP practice in San Francisco. This means attorneys are spending more time on Web-related trademark transgressions. "This is not a fad or going into diminution," notes Larry Townsend, a sole practitioner in San Francisco who is also of counsel with Owen Wickersham & Erickson. "The interrelationship between trademark and domain names continues to be a bigger part of our practice." Certainly, trademark holders are not without remedy. Companies can demand "takedowns" of bogus ads by going through a search engine company's complaint process. And infringement suits can be brought under federal laws such as the Lanham Act (15 U.S.C. §§ 10511127) or the Anti-Cybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)). California's unfair competition statutes also provide avenues for redress (Cal. Bus. & Prof. Code § 17200). But slim are the chances of extracting damages from enigmatic cybersquatters, many of whom operate from foreign countries. Lawyers are left to work through an ICANN-sanctioned process to seek the transfer or cancellation of a disputed website. Because the private entities that manage domain names - called registrars - don't always implement the orders that come out of these administrative proceedings, attorneys may have to remain involved, pursuing cease-and-desist actions (some rogue registrars have even lost ICANN accreditation). And the parties can always decide to litigate if the court has jurisdiction over the defendant. But blindly cracking down on anything that appears to be cybersquatting won't do, say First Amendment advocates such as Corynne McSherry, a senior staff attorney at the Electronic Frontier Foundation. The San Francisco organization is currently representing The Yes Men, an activist-artist duo that the U.S. Chamber of Commerce sued for trademark infringement over a well-publicized spoof of its website. "In the name of trademark policing, legitimate speech gets taken down," McSherry says.
Kari Machado
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