Attorney Steve® Domain Name Dispute Essentials - Handling the Trademark Bully (Reverse Domain Cybersquatter)
I recently defeated a Chicago, Illionis Bittorrent Defense IP law firm that tried to hijack the domain name that I had before they ever even registered a trademark (majority of the WIPO panel found reverse domain name hijacking). More to come on this. Owning over 600 domains (mostly legal .com domains that other law firms failed to buy and apparently crave ownership of), I get my fair share of what I call Trademark Bully demands.
What has happened is that I will have a great descritpive domain name, and they (sometimes a competitor) may be frustrated that they have a lousy domain, (for example an old school doman with a dash or just a lousy domain) and decide to FILE A TRADEMARK with the UPSTO. Then, after obtaining the registration (after I have had my domain and using it) then they try to come back to me and get my domain name that they apparently wish they had.
I have had several companies pull this stunt - including two intellectual property law firms if you can believe it, one that I compete withinin defending Strike 3 Bittorrent cases, and another one dealing with a different domain (that FOR NOW shall remain nameless) that deals with a burgeoning area of law. Here is how I handled that firm that approached me for a "partnership opportunity" (that I was not interested in and declined), then they tried to BULLY UP and demand the domain name that I owned. This may become a new ill-advised UDRP, I don't know since I have not heard back from them after I pointed out key facts and the law to them.
CYBERSQUATTING DEMAND RESPONSE LETTER
Here is the gist of the letter I sent to a firm that tried to scare me into relinqushing my domain by noting "we have 100 years combined legal experience). This is one of the biggest misleading statements in legal advertising as you could have a 100 lawyers with one year experience each, which means very little. At any rate, here was the gist of my response to them:
"Shame on you counsel. Any attempts to "strong arm" my legitimate domain will be vigorously opposed and countered on all fronts. You should do your research. It is not clear why you contacted me for a potential "partnership" then when I refused, you started to try to bully my domain out of me claiming your XXXXX was a protected brand and that my domain name XXXX infringed on your rights. If you wanted the domain name so bad (which is merely a descriptive name that does not infringe on your rights), then you should have had the foresight and exerted the effort to pick up the domain. Your attempt to trademark this domain after the fact (known as a "Johnny Come Lately" trademark registration) if granted, does not give the legal rights to come try to strip my legitimate domain from me - in fact, a domain that I am using in commerce). As an IP lawyer, you are really pushing the line and we will not stand for any attempt to reverse cubersquat on my domain name."
2022 Update: I have not heard back from these IP pirates / trademark domain name bullies. If they decide to bring their ill-advvised UDRP, or ACPA case in federal court, I will be waiting for them with all the documentation.
Attorney Steve® Tip: Guys GET YOUR OWN DOMAINS, you will spend a ton of money trying to reverse Cybersquat on a domain, filing a UDRP action with WIPO or NAF only to lose. As a law firm, you should be held to a higher standing of knowledge, and ethics.
Contact a Cybersquatting Law Firm
We represent both Plaintiff and Defendants (complainants and respondents) in trademark domain name issues. We can draft and respond to infringement cease and desist letters, file and respond to UDRP domain name complaints, file TTAB trademark cancellation proceedings against holders of descriptive domains and 2(f) filers who falsely assert that they were making "exclusive use" of a descriptive domain name, tyo-squatting, social media handle squatting, and other similar cases including Federal Court Lawsuits (we have appeared in over 250 federal court lawsuits making us one of the top copyright law firms in the nation per number of cases handled). In fact, Unicour identified us in 2020 as THE #1 Copyright infringement Defense Law Firms in the UNITED STATES per number of federal court cases handled. We are awaiting the 2022 results. In this niche are of intellectual property law, there is simply no substitute for experience. In some cases, you may have a claim under the ACPA (Anti-Cybersquatting Consumer Protection Act) for damages and attorne fees in exceptional cases.
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