Source: APBnews.com
By: David Noack
(NEW YORK, NY) — Cybersquatting, the get-rich-quick scheme of registering a popular Internet address, usually a company name, with the aim of selling it back to its rightful owner to make a few bucks, may soon be cyber-history.
The information-age practice was dealt a serious blow late last year with the passage of the Anti-Cybersquatting Consumer Protection Act, sponsored by Sen. Spencer Abraham, R-Mich., and now companies are taking advantage of the law to fight back.
Within the last week, QVC, the cable shopping network, which also has a Web site, and Teen Magazine, a print publication that has also a Web site, have taken court action against two individuals who created pornography sites with Web addresses playing off the companies’ names.
Domain names are registered with companies such as Network Solutions Inc. of Herndon, Va. After a fee is paid, the name is registered.
Links to porn site
Teen Magazine, the nation’s largest monthly magazine for teenage girls, filed suit Thursday against the operators of a link to a pornographic Web site that they claim has illegally used their trademark. The lawsuit was filed in U.S. District Court in Camden, N.J., where the company’s main offices are located. The magazine is seeking injunctive relief and trademark infringement protection against the operators of teenmagazine.com. The link to the adult Web site no longer works.
“This is precisely the kind of situation for which the new law is intended,” said David Jacobs, counsel for Teen Magazine. “What makes this case particularly urgent is that Teen Magazine readers are typically 12 to 17 years old, and teenmagazine.com is being used purposely as a link to a pornography site.”
Teen Magazine has its own Web site, Teenmag.com, and it receives more than 20 million page views per month. Teen Magazine has been seeking custody of its full domain name, which is being trafficked in by cybersquatters, noted Lynn Lehmkuhl, president of Emap Petersen’s youth division.
Defendant claims he worked for client
On Tuesday, QVC Inc., located in West Chester, Pa., filed a federal lawsuit in Philadelphia against an Arizona man who created a pornographic shopping site called AdultQVC.com.
In its lawsuit, the company charges that Jay Cambern, a computer consultant in Mesa, Ariz., began the adult Web site to “market pornographic goods and services” and to “profit from the QVC trademark.”
In addition, the shopping network also claimed the adult Web site “portrays the QVC marks in an unwholesome and unsavory context and evokes a negative image.”
For his part, Cambern said that AdultQVC was launched Dec. 30 as a project that was done for a client of the Web development company. He said that when they develop a Web site for a company, they purchase the domain name, launch the site, then transfer ownership of the Web address to the client.
Cambern said that Dec. 31 he was contacted by lawyers for QVC, saying that the site was in violation of the new law. He said after talking to his client, the Web site was taken offline. But he’s still been ordered to appear in court to reveal the client’s name.
But QVC attorney Manny D. Pokotilow doubts there is a client.
“We don’t believe there is a client. If he could have passed the blame to someone else he would have,” said Pokotilow.
Sports leagues join forces
Pokotilow lauded the new law as a potent weapon in helping to bring cybersquatting to an end. Before that, trademark lawyers had to rely on the Lanham Act, passed in 1946, and later revised within the past few years to include Web addresses.
In late December, even before the latest legal skirmishes, the licensing arms of the major sports leagues banded together to create an anti-counterfeit group that they named the Coalition to Advance the Protection of Sports Logos, or CAPS. They included Major League Baseball Properties Inc., NBA Properties Inc., National Football League Properties Inc, and NHL Enterprises L.P., as well as The Collegiate Licensing Company.
Right after the group was formed, they filed a lawsuit against FlairMail.com, operated by Jeff Burgar, for allegedly violating the Anti-Cybersquatting Act by offering free customized e-mail addresses incorporating the names of many professional sports teams from all the leagues, such as “gomagic.net,” “rangers1.com,” “goredwings1.net” and “yankees1.com.”
Lawyer: Profit made from names
In their legal action, the group contends that FlairMail.com profits from these domain names in a variety of ways, including from advertising revenue generated by e-mail accounts.
“FlairMail.com, like hundreds of counterfeiters we’ve successfully prosecuted, is profiting by using the trademarked names of professional sports teams,” said David M. Proper, associate counsel for National Football League Properties. “All the leagues are being exploited by this company, and we see a unique opportunity to join forces.”
The leagues are seeking significant civil damages for cybersquatting, trademark infringement, dilution, unfair competition and false designation of origin.
Law imposes statutory damages
Intellectual property law professor Kenneth Port, who teaches at Marquette University Law School, said the law imposes statutory damages, ranging from $1,000 to $100,000.
“This should take a real bite out of the cybersquatter’s revenue stream where they didn’t care if they had to pay out sometimes because they were making a lot of money selling marks back to their owners,” said Port.
He explained that a key provision of the law includes in rem jurisdiction, which empowers trademark owners.
Port said that cybersquatters will typically use a false address when registering a domain name, so when it comes time to serve them with legal papers, they can’t be found.
But now, trademark owners can sue the domain name itself.
“So, it doesn’t matter if the trademark owner can find the cybersquatter or not. The trademark owner sues the domain name, the cybersquatter is given notice at whatever false address they provided, and if they don’t show up, the court may order the transfer of the domain name to the trademark owner,” said Port.
