Domain Name Disputes

Domain Name and Internet Law Attorneys at Lewis & Hand, LLP, a Brooklyn, New York, Law Firm Lewis & Hand, LLP provide legal advice and act as consultants to clients throughout the United States and the world in disputes handled under the ICANN (Internet Corporation for Assigned Names and Numbers) Uniform Domain Name Dispute Resolution Policy (UDRP).  Our Domain Name Dispute team also represents clients in Federal Courts throughout the United States in connection with claims brought pursuant to the Anti-Cybersquatting Consumer Protection Act (ACPA).

Disputes over domain names arise out of commercial competition, broken business relationships, outright theft, and opportunistic profiteering.  A partner diverts the domain name registered in his name to a new site, competing against his former partner.  An employee registers a company domain in her own name, and takes it with her when she leaves the company.   A company registers a new trademark, but is dismayed to find that someone has registered and parked a domain name that incorporates their new mark.  A competitor registers a domain name that incorporates a company’s trademark, and points it to a competing Web site.  A large company sends a cease and desist letter demanding that the registrant of a dictionary word domain name hand it over or face statutory damages under the ACPA.

Many misapprehensions abound as to what is permissible and what is not permissible conduct in connection with the registration and use of domain names. At Lewis & Hand, LLP, we assist our clients to assess and evaluate their options and to help determine the best course of action under the circumstances, based on our extensive experience navigating all manners of domain name disputes.

Our Domain Name and Internet Law Attorneys represent some of the biggest and best known domain name registrars, domain name investors, parking companies, and Internet marketing companies in the world.  We represent clients throughout the United States and internationally in domain name disputes, and have represented numerous trademark owners and domain name registrants in disputed brought under the UDRP.  Links to some of our representative UDRP decisions are available here.

Lewis & Hand, LLP also represents clients in U.S. Federal court in connection with domain name cybersquatting and trademark infringements claims brought pursuant to the ACPA.

For domain name holders, Lewis & Hand, LLP attorneys can audit your existing portfolio for potential trademark issues and give advice on how to minimize risk of future disputes. Our domain name team also offers trademark risk assessment, clearance letters and due diligence services if you are considering registering, acquiring or investing in a new domain name for your business or portfolio.

For your initial consultation with Domain Name Dispute Attorneys Brett Lewis, Melissa Apfelbaum and Dina Leytes, contact Lewis & Hand, LLP today.

• We offer flat fee retainers, and consider requests for flexible billing arrangements, including blended contingency fee arrangements and success fees, on a case by case basis.

Click here to view selected Domain Name articles authored by Lewis & Hand, LLP attorneys.

A Brief Guide to Domain Name Disputes

Domain name disputes that cannot be resolved through negotiation are often decided through the Uniform Domain Name Dispute Resolution Policy (UDRP), an administrative arbitration proceeding put in place by ICANN to govern trademark disputes over domain names.  Administrative panels deciding matters pursuant to the UDRP evaluate three factors in determining whether a violation has occurred:

• Is the domain name in dispute confusingly similar to an established trademark? Put another way, is the domain name at issue similar enough to an existing trademark that it is likely to cause confusion among potential clients and customers?
• If so, does the registrant of the disputed domain name have a legitimate right or purpose for using the name?  Did he have a trademark in the domain name before he registered it?  Has she used or prepared to use the domain name as part of a legitimate business?
• If not, can the complaining party prove that the name was registered in bad faith? Examples of bad faith include, but are not limited to, registering a trademark as a domain name with the intent to sell it to a trademark holder, and registering the trademark of a competitor as a domain name.

Often, the registrants of generic or descriptive dictionary word domain names are threatened or sued.  Many of these claims are overreaching.   We have assisted numerous clients to respond to these threats, and to keep their domain names.

Cybersquatting claims can also be brought in federal court under the ACPA, as can actions to declare that a registrant has legitimate rights in a domain name and to stop a domain name transfer ordered by a UDRP panel.  The ACPA also provides for statutory damages, with fines of up to $100,000 per domain name registered and used in bad faith, as well as injunctive relief.

If you have a dispute involving the misuse of a registered domain name, or an overreaching claim or demand letter from a trademark holder, contact a domain name dispute lawyer at Lewis & Hand, LLP to discuss your options.