INTELLECTUAL PROPERTY LAWYERS WHO KNOW THE INTERNET

Doing business on the Internet raises certain special concerns for owners of intellectual property and those who use the content, trademarks, domain names, photographs and software of others.  We have significant experience in the following areas related to the Internet:

Deep linking and framing:
    •    Metatags, watermarks, hidden text and cloaking disputes;
    •    Digital Millenium Copyright Act;
    •    Privacy;
    •    Website Audits;
    •    Domain name disputes;
    •    Cybersquatting (bad faith use and registration of domain names)
    ◦    Cyberflight
    ◦    Typosquatting;
    •    Hacking;
    •    Defamation;
    •    Website and web development agreement negotiations and drafting;
    •    Purchase and sale of Internet businesses;
    •    Warranties/Guarantees, false advertising;
    •    Spam; and
    •    Acquisition of targeted domain names.

We're Focused on Practices That Threaten Trademark Owners’ Interests Such As:
    •    dealing with the use of Whois privacy services for registrations;
    •    the growth in the number of professional domain name dealers and the volume of their activity;
    •    the use of computer software to automatically register expired domain names and their ‘parking’ on pay-per-click portal sites;
    •    the option to register names for a free, five-day "tasting" trial;
    •    the growth in the number of accredited registrars; and
    •    the establishment of new generic Top Level Domains (gTLDs).

Domain name tasting services enable a person or entity (who may be affiliated with a registrar) to register a domain name for a five-day grace period without a registration fee, and to park the name on a pay-per-click website monitored for revenue. The name is then dropped or re-registered by a new registrant, thereby starting a new grace period.

Only those domain names generating significant traffic are permanently registered. As a result of computer applications, tens of millions of domain names are temporarily registered on this basis each month.??Traditionally, cybersquatting involved the registration of domain names by individuals seeking to sell the 'squatted' domain name.

Nowadays, 'domainers' derive income from the large-scale automated registration of domain names. They acquire domain name portfolios, buy and sell domain names, and park domain names, claiming a significant share of the well over 100 million domain names that are now registered.

There is a rapid growth of domain parking sites, on which links to other sites are organized and indexed. These links usually operate on a ‘pay-per-click’ basis with registrants and parking services sharing revenue generated by web traffic. This is fueling rapid growth in ‘domaining’ and registrar activities.

Whois privacy services are allowing domain name registrations to be made through a proxy registrant, often a registrar-related entity. WIPO panel decisions are beginning to explore the practical implications for the Uniform Domain Name Dispute Resolution Policy (UDRP) of these developments, for example in terms of whether or not the privacy service discloses the identity of its client once the service has been alerted to concerns of trademark infringement.

The application of the UDRP decision criteria is already evolving to accommodate a number of such new developments. For example, WIPO panels have generally held that for a domain name to be transferred under the UDRP, there needs to be some indication that the registration was made with the intention of taking advantage of the complainant-trademark owner's rights in that name. With regard to bulk buyers of domain names using automated registration processes, a WIPO panel decision (Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964) found that failure to conduct prior checks for third-party rights in certain circumstances would represent 'willful blindness,' representing bad faith under the UDRP.