If Larry Page is for internet entrepreneurship, Zak Muscovitch is for internet law. If you are in internet business or involved in domain name dispute with large corporation, Zak is the lawyer who can come to your rescue. Zak is the principal of The Muscovitch Law Firm which operates DNattorney.com and has represented clients from all over the world in numerous ICANN UDRP domain name disputes and was lead counsel in many cases including Toronto.com, Sweetsuccess.com, Technodome.com, Canadian.biz, CheapTickets.ca. He represented Shoes.Biz, Forslae.ca, LongRiver.com (against Hong Kong billionaire Le Ka Shing). However, the most notable was against Google on behalf of Groovle.com in which Google lost the case which was one among the only two arbitrations lost by Google at that point. Zak stated after the case that, “Most people use Google, most people appreciate Google, most people love Google … but I think most people appreciate when the little guy takes on the giant – and wins 🙂
Zak gives some useful information to us below. To read more about Zak Muscovitch and his blog click here.
TechStorey: In spite of anticybersquatting legislation the number of complaints to ICANN has increased. Where are these complaints coming from? Are companies more vigilant than before? Or larger corporations are more active in reverse domain name hijacking?
Zak Muscovitch: The only country that I am aware of that has enacted specific legislation to deal with cybersquatting, is the U.S.’s Anti Cyberquatting Consumer Protection Act (ACPA) of 1999. Nevertheless, many countries use their existing trademark and unfair competition laws to deal with cybersquatting, even though these laws do not specifically address cybersquatting. But despite these laws, including the ACPA, most trademark owners still choose to use the Uniform Domain Name Dispute Resolution Policy (UDRP), which is a mandatory online arbitration system created by the Internet Corporation for Assigned Names and Numbers (ICANN). This is often more cost effective and streamlined, when compared to a lawsuit.
Statistics of UDRP cases filed with WIPO
(http://www.wipo.int/amc/en/domains/statistics/cases.jsp) , which is one of several UDRP arbitration service providers, shows that there has generally been a modest increase year over year since 1999, with a few annual exceptions. There have been a total of 30,443 UDRP cases filed with WIPO since 1999, and 23,447 filed with the National Arbitration Forum, which is another well-established UDRP dispute resolution service provider. These complaints come from brand owners located all over the world. Sometimes it is a matter of a brand owner being late in claiming its corresponding domain name, and in other cases it is a matter of a brand owner identifying more recently registered cybersquats. Recently, there has been an upswing in a newkind of case involving the new gTLD’s – which are brand new domain name extensions, such as .club and .xyz. Reverse domain name hijacking – which is when somebody tries to use the UDRP to get a domain name from the lawful registrant, in bad faith, are not that common, but continue to occur. Often companies are found guilty of RDNH when they try to buy a generic domain name, but fail to do so, and then make up a UDRP claim in order to try to unjustly get it anyhow.
TechStorey: Some large companies book hundreds of domain names to avoid cybersquatting and typosquatting. On the other hand there are cases where large companies are very careless when it comes to domain name strategies. What practice do you recommend your clients to fortify their domain names in terms of number of domains and years of domain name blocking?
Zak Muscovitch: Companies will generally find it more cost effective to conduct a comprehensive search of similar domain names that are not yet registered, and then register these domain names, rather than having to recover them through legal means. On the other hand, given the virtually unlimited permutations of possible infringing domain names as a result of the new gTLD’s, companies should also consider whether there is any genuine risk in allowing cybersquats to continue. It may be that some are more problematic than others, and it is no use trying to indefinitely ‘wack a mole’. For example, if the client is a bank – such as ABC Bank Inc., and is therefore susceptible to phishing – i.e. fake websites using a confusingly similar domain name, then the client should take greater care in getting all possible permutations of its trademark in domain names, such as ABC-BANK.COM. Similarly, if a brand name clothing company sees a problem with counterfeit goods being sold via infringing domain names, then it too must take a more aggressive and comprehensive approach. But on the other hand, other companies may not have a genuine problem with somebody registering a similar domain name, if it is not being used and not harming the brand. It is a judgment call in every case.
TechStorey: You have represented shoe.biz, cheaptickets.ca and have succeeded cases against some of the largest corporations including Google. Many of the cases you have represented are Reverse domain name hijacking where a large corporation attempts to secure a domain name by making false cybersquatting. This often intimidates small business owners and individuals into transferring ownership of their domain names to trademark owners to avoid legal action. What advice do you give to individuals and small business owners who may not have resources to fight the case? Are domain name litigation settled outside the court?
Zak Muscovitch: I often see large law firms with sophisticated clients file UDRP complaints, when they have no case at all. Accordingly, anyone who feels that they are unjustly being accused of cybersquatting should at least consult a domain name lawyer to see if that is the case. Although a UDRP case can be handled oneself, it is usually advisable to retain a domain name law specialist to assist, and often it is money well spent because the brand owner might be forced to buy the domain name from the registrant, if the brand owner turns out not to have any genuine legal case. Also, sometimes a case can be settled outside of the UDRP or court, but this must be handled very carefully as well.