Want to see our take on the most
important Federal lawsuits dealing with domain names
filed last week? We monitor the country daily and
offer our thoughts about each. Just read on down to
the bottom of this page and find out what practices
are leading to lawsuits!
As domain name attorneys, we don't
just handle domain name disputes...but all of the
issues a domain name holder faces in the course of
business. Dozier Internet Law is one of the biggest
domain name owners in the world with 3,000 domain
names, so we know the issues involved in the domain
name business. Who are the parties we would consider
assisting as a domain name attorney?
Small domain name owners doing it on the
side
High volume owners monetizing domains as a core
business
Registrars
Registries
Special interest groups
Foreign countries
Our clients retain us as domain name attorneys
when they need a domain name attorney to assist them
in sales and transactions, due diligence, trademark
clearance, acquisition strategies and tactics,
enforcement and defense of claims, legislative
consulting, litigation, litigation avoidance and
risk analysis, and a broad array of related services
requiring a high degree of knowledge, expertise, and
experience as a domain name attorney. Much of our
work is confidential in nature, but a sampling of
some of our publicly available UDRP decisions
provides some insight into the quality of the work we do
as domain name attorneys. We represent both sides of
the disputes:
Our client was sued for use of a competing
company's domain name in Federal Court in
Nevada.
A competitor sued our client for domain name
theft in Federal Court in Washington state.
A member of a club took our client's domain
name when he resigned and initially refused to
relinquish it.
A registrar made a major mistake and released a
domain name for public sale.
We filed a UDRP arbitration proceeding against
a well known Caribbean domain name cybersquatter
after negotiations for purchase failed.
Our international client had companies around
the world guilty of domain name theft using his name
with country specific suffixes. We issued cease and
desist and demand letters.
We were retained as a domain name attorney by a
European client to negotiate the purchase of a
domain name involved in a domain name dispute.
Our client had won domain dispute (UDRP)
proceedings, but needed assistance in the transfer
of the names after significant delays in modifying
records of ownership at the registrar.
A large company sat on its rights and did not
seek its domain name for ten years and our client
was entitled to sell it.
Our client wanted a domain name, the contact
information was outdated on the registration, and
with that information we structured a strategy to
gain possession of the name for him.
A competitor secured a domain name in the name
of our client's business, and used it in a high
speed redirect to direct traffic searching for our
client's business to its own website.
High volume cybersquatters were using our
client's business name to present Adsense ads
through Google for related, but not competing,
products.
Our client held domain names protected by
trademark in foreign countries, but not protected in
the US, and a major company demanded the delivery of
the valuable domain names to it.
Two suits, one in federal court and one in
state court, were filed against our client for
cybersquatting. This was his first notice of the
claim.
Our client's name was used by a competitor
embedded as only part of its domain name.
A law firm issued a DMCA takedown notice for
copyright infringement based upon our client's
ownership of a website it did not own. The lawyers
mispelled the domain name.
A European company demanded that our client, a
major domain name owner, transfer a high value and
very common, generic, and every day word based upon
a trademark registration in Europe.
A new business owner filed a UDRP arbitration
proceeding in an attempt to obtain domain names for
which our client had received express permission
from the previous owners to use.
A well financed diet guru attempted to extend
his trademark to our client's business and filed a
UDRP proceeding in an attempt to obtain several
domain names.
Our reseller client had built up a significant
business using the manufacturer's name, and when new
owners took over the manufacturer demand was made
for the domain name.
A web developer working with our client real
estate agency tried to hijack a valuable domain
name by misleading our client into giving up control
of the registration.
A well known retailer initiated a UDRP
complaint against our global real estate development
client over an art industry domain name housing our
client's multi-million dollar art collection.
Our client bought a valuable domain name, and
the "owner" then claimed that it had been stolen
from him in an apparent scam to steal our client's
money.
Our online gaming client pursued two competing
sites through the UDRP process for using its own
name in their domain names to lure traffic away from
our client.
A major office supply company demanded transfer
of a domain name being used by our large retail
client for the last five years asserting that our
client's business had begun competing and causing
consumer confusion.
One of the cities competing for the 2016 Summer
Olympic decided it owned the rights to the name of
its city and demanded our client transfer the name
to the local olympic committee.
A software company demanded transfer of a
domain name in which it held a trademark and our
client retained us to negotiate a sale and evaluate
the strength of the company's claim.
Our client's company name was purchased as a
.net domain name by its competition and the traffic
was being directed to a competing site.
We were retained to negotiate and close a sale
of a high value domain name, including developing
strategic and tactical approach.
A large EU company demanded that our client
turn over its domain name for cybersquatting, and we
undertook negotiatios for the sale of the name.
Our client's new competitor chose a confusingly
similar name and started sending out emails selling
our client's products and services.
A Fortune 500 business demanded that our client
deliver to it domain names containing its name, but
the products and services advertised were for
licensees of the company and the fair use doctrine
may apply.
An insurance company demanded the transfer of
its domain name despite previously authorizing the
agent to use it.
A disgruntled former employee bought up domain
names similar to our client and launched an attack
website.
A convicted felon acquired domain names of our
client and launched a site claiming ownership of our
client's prominent consulting business as an
extortion scheme.
Our domain name client retained us to assist it
in acquiring a registrar license.
An e-retailer sold its domain name and site to
a venture backed start-up and we were asked to
assist in the domain name and website transfer.
A former business partner of our client, still
in control of our client's business domain name,
changed the ownership information of the domain
name, and pointed the IP address away from our
client's business.
Our client, a large UK domain name player,
received a demand based upon EU law to turn over
valuable domain names, although US law supported his
right to ownership.
An online business had close variations of its
domain name purchased by a competitor and used to
direct traffic to the competing website.
A professor at a major university retained us
to secure domain name rights and ownership of terms
he had coined in his scholarly works.
Through either client or registrar error, our
client's extremely valuable domain name was not
renewed in a timely manner and was acquired by a
large healthcare company.
Our Russian marketing representative client was
tasked with securing the domain names for a new
product about to launch in the Far East, and the
registrar reversed the registration because of
trumped of claims that our client was somehow
affiliated with illegal activity.
Our SEO client had its login stolen by a
business and a valuable domain name taken.
A high volume owner is seeking to monetize its
domain name inventory and needed legal clearance on
scope and extent of permissible use.
The beneficiaries of an estate needed help in
recovering extremely valuable domain names stolen
from the decedent's account in the days following
his death.
A major casino claimed rightful ownership of a
domain name owned by our client that included the
casino name.
A valuable domain name had been taken from a
registrar account, transferred to Europe, and then
purchased by an individual in the Middle East.
Our client needed our assistance in negotiating
a domain name sale with a major entertainment
company.
An investment bank retained us to protect itself
from domain name cybersquatters in China.
An increasingly popular retailer needed to
acquire its .com domain name from an existing
owner.
Our client in India was sued in the US for
cybersquatting based upon activity that occurred
prior to its acquisition of the domain name.
A new business’ .com domain name extension was
owned by a competitor and was likely to be used to
direct traffic away from our client.
A domain name owner involved in leasing domain
names needed to collect on outstanding sums due
under a lease.
Our client’s valuable domain name was stolen
from his account at a registrar and we were hired to
get it back.
A very large domain name holder was sued by a
Fortune 500 company because a portfolio of domain
names it acquired included the name of the
company.
An ex-partner of our client sued him in
California alleging theft of a domain name and
related business.
A small domain name holder acquired domain names
for a merging company and the company, post merger,
demanded the transfer of the name.
A domain name registrar hired us to assist them
in structuring internal legal procedures in order to
comply with the registrar contract and laws.
A competitor of our client, having passively
held a domain name including our client’s name for a
long time, started using it actively to advertise
its competing services.
Arbitration was filed against our client
alleging he was required to transfer a domain name
to the other party in accordance with a previous
negotiated settlement agreement.
A six figure bid, from our client, which was the
highest bid, was negated by an auction house when an
alleged and unspecified “error” was made in the
sale.
A credit card did not have adequate funds
available to pay for the renewal of domain names,
and our client initially lost some of its very
valuable domain names.
A major domain name owner was the recipient of a
UDRP complaint attempting to obtain a valuable
domain name.
The former web developer for our client
purchased domain names containing our client’s
registered trademarks and resolved the names to a
competing website.
Popular social networking sites need to avoid
any problems with their domain names, so when an
important domain name stopped resolving to the
social network site we were hired to fix the
problem.
Our large automotive retailer’s web developer
absconded with its domain names and tried to hold
them hostage and extort money from our client.
Think about it. We are domain name attorneys. We
are litigators. As domain name attorneys and
internet lawyers, we sue people. We defend people as
a domain name attorney. The Internet is all we do.
So, when you get a letter from us and visit our
website, what impression is left in your mind? Is
our client serious? That gets results, without
having to file domain name dispute lawsuits and
arbitration actions all the time. Do you want a top
rated, pre-eminent domain name attorney backed by a
team of seasoned domain name attorneys on your case?
Do you need a domain attorney who is a specialist in
the law of the web? We are here if you are
interested in getting a domain name and want to do
it as efficiently as possible, and we are here when
you want to hold onto a domain name, work out a
purchase or sale, or put together an overall
strategy to avoid domain name theft and domain
disputes.
Domain name attorneys & domain name
attorney.
We offer free consultations to qualified clients.
Just go to our contact page for more
information.
Domain Name Attorney Suit Summary
Set forth below is one of our summaries of a
United States District Court federal lawsuit. If you
are interested in reading about other lawsuits, in
the order of most recent Federal Court filings
first, you will find a link just below the case.
Please understand that all facts, as well as
references to the basis of the lawsuit, are our
summarization of the allegations made by the party
bringing the lawsuit. The facts may prove to be true
or not true, and the plaintiff may or may not win
the case. The bolded comments are Mr. Dozier's
thoughts about the suit. Pay particular attention to
the alleged conduct or practice that has resulted in
the litigation. For a small business, litigation is
expensive. As a domain name attorney law firm, we
are hired to file and defend suits nationwide, and
we can also assist you in minimizing your risk in
advance.
WINONA HOMES INC. v. ELLEFSON BUILDERS, INC.
DISTRICT OF MINNESOTA (DMN)
0:08-CV-00539
FILED: 02/26/2008
Winona is the name of a city or
town. Proving trademark rights in the "Winona Homes"
name is going to be very difficult. There is one
interesting point in this lawsuit, however. The
assertion that the owner of a domain name quoted a
sales price is not really relevant. It is important
only to show bad faith once you prove you have
trademark rights. But, contrary to the way this
issue is often handled in a lawsuit, there is
nothing wrong with domain name owners offering to
sell the name they own for any price they want.
Think of domain names as real estate, and unless you
have a legitimate claim to that plot of land, you
can't expect the owner to just sign the deed over to
you. Domain names are the real estate of the online
world.
Plaintiff, a Minnesota corporation, sells and
markets manufactured and modular homes and related
products and services. It has operated a website at
www.winonahomesinc.com since at least 2002.
Plaintiff has used the trade name and trademark
"WINONA MODULAR HOMES" since 1976 and the trade name
and trademark "WINONA HOMES" since 1990. Defendant,
a Minnesota corporation, is a competitor of
Plaintiff and registered the domain names
www.homeswinona.com and www.homesforwinona.com in
2006 and 2008 respectively. Defendant uses these
two domain names to advertise its homes and home
construction services, and it promotes these domain
names on signs and in radio advertisements. In
response to Plaintiff's cease and desist letter,
Defendant denied committing trademark infringement
and cybersquatting but offered to sell the domain
names to Plaintiff for $15,000.
Plaintiff filed a lawsuit against Defendant in
federal court in Minnesota. Plaintiff alleges
cybersquatting, federal unfair competition,
deceptive trade practices under state law, unlawful
trade practices under state law, common law
trademark infringement, and common law unfair
competition. Plaintiff requests that Defendant's
domain names be transferred to Plaintiff and that
Defendant be prohibited from using Plaintiff's
trademarks, trade names, and/or any confusingly
similar names for any purpose. Plaintiff also asks
the Court to order Defendant to recall all marketing
and advertising materials that use "WINONA HOMES" or
any confusingly similar mask, and that Defendant
turn over to Plaintiff all materials in its
possession using Plaintiff's marks. Additionally,
Plaintiff requests damages, costs, and attorneys'
fees. Dozier Internet Law Cross-Reference Number
1062.
Want to see the latest court
filings with Mr. Dozier's take on the cases? Visit
the Dozier Federal Court Report section dedicated to
domain name lawsuits: Domain Name Dispute Case Notes.
And, if you would like to browse trademark
infringement, copyright infringement, and trade
secret lawsuits, and get a good idea of who is
getting sued for what, you can go to the Dozier Federal Court Report Portal.
"Thank goodness for John and his team. With their trial
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