X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Cyber pirates hoping to profit from companies’ brand names on the Internet be warned: Boston attorneys William R. Grimm and Deborah Benson have gotten good at snatching back clients’ identities. Grimm and Benson, of Hinckley, Allen & Snyder in Boston, have helped clients, ranging from FleetBoston Financial Corp. to Grammy-winning rapper Jay-Z, fend off a dozen cybersquatters who register Internet addresses similar to trademarked brand names. Even two years ago, trademark owners had few weapons to combat cyber pirates, Grimm said. Anyone with $70 could register an Internet domain name on a first-come, first-served basis. So cybersquatters bought up names, hoping to resell them to trademark owners at exorbitant prices. Other deceptive sites take advantage of misspellings to redirect users to competing goods or services. Some are the home pages of dedicated fans, like the teenager who registered a site in Jay Z’s name. But Grimm and Benson have employed two new legal tools in the last year to thwart would-be pirates. Trademark owners can now sue bad faith registrants in federal court under the Anti-Cybersquatting Protection Act, or bring arbitration proceedings before the World Intellectual Property Organization (WIPO). Fighting cybersquatters, which now accounts for 10 percent of Grimm’s practice, is a natural outgrowth of his intellectual property work for clients, said Grimm. FLEETING MOMENTS In the last year, Hinckley, Allen and Snyder, with offices in Boston and Providence, R.I., challenged six domain names for Fleet. Grimm recently obtained a temporary restraining order against the owner of the domain name, wwwfleetbank.com. By omitting a period, customers of Fleet — and 100 other banks targeted by the same scheme — were unknowingly redirected to a Web site that asked visitors to divulge personal information. A federal judge granted an injunction rejecting the owner’s explanation that he was researching consumers’ typing errors. In one of the firm’s first domain-name cases six years ago, Benson, who works out of the firm’s Boston office, represented the Kryptonite lock company in a federal trademark dissolution suit against a New York Web site designer who registered the site, kryptonite.com. The firm also challenged a salesman who registered a site name called Colibri cigars, in the hopes of landing a distributorship with the company. Not all Hinckley, Allen & Snyder clients are challenging infringements of their trademarks. The firm has also defended one domain name owner accused of cybersquatting. John Treadway, who registered the name Shutterbug.com to create a Web site for photo enthusiasts, sought help from the firm after being challenged by Shutterbug magazine. “I didn’t expect them to come after me,” said Treadway, who works for a Boston software company. He won his case before the WIPO by showing shutterbug is a commonly used name for photo enthusiasts. “I’m very happy they represented me,” said Treadway. THE ROLE OF THE WIPO The WIPO appoints arbitrators to review the parties’ written pleadings and issue decisions within 60 to 90 days. They can order the transfer of domain names that are confusingly similar to a trademark and used in bad faith by an owner who has no rights to the name. Diverting users from their intended destination, warehousing a site name without using it or trying to sell the site to the trademark owner may all present evidence of bad faith, Grimm said. Of WIPO’s 150 domain-name cases each month, about 90 percent result in victories for trademark owners. Grimm said WIPO’s lower cost usually makes it a better venue to act against cybersquatters but, since all argument is based on written pleadings, there’s less opportunity to present evidence. “WIPO is a good place to go initially unless you have an emergency situation where your trademark is being misused or your customers are being misdirected,” Grimm said. Grimm said he expects cyber-piracy to decrease as squatters realize there’s no money to be made under the new enforcement mechanisms. “They’re getting more cautious,” Grimm said of cybersquatters. He advises that trademark owners need to regularly plug their names into a search engine to check whether they’re being misused. “There’s no other way to police it,” Grimm said. Benson said more recent violations are harder to track. Squatters bury trademarked names deeper in the domain name or register in foreign countries that do not participate in WIPO dispute resolutions, she said. “It’s still the Wild West,” Benson said. For instance, Amazon.com sued a Greek corporation that registered amazon.com.gr and threatened to open a bookstore on the site. Complicating matters are 10 new domain suffixes approved by the Internet Corporation for Assigned Names and Numbers, the non-profit organization that oversees domain name registration. Come June, new Web addresses may end in dot-biz, dot-aero and dot-name. Grimm said the new names will force companies to be more vigilant, but expects few to get caught unprepared, as they did, when the Internet boom first began. “Most major companies are now in tune with the Internet,” Grimm said. “They know it’s important, and they’re rushing to register their valuable trademarks at these other top-level domain names.”

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.