Category Archives: Domain Name Disputes

Tucows Fights off Car Dealership

Tucows wins UDRP decision for

Domain registrar Tucows has successfully defended against an arbitration proceeding over the domain name, which the registrar acquired with its NetIdentity purchase. NetIdentity holds nearly 40,000 surnames and offers email addresses at those names, such as

The complaint was filed by Ken Batchelor Cadillac Company, a car dealership in San Antonio, Texas. The National Arbitration Forum panel determined that Batchelor Cadillac did not establish rights in the mark “Batchelor”. Establishment of rights to the mark is one of three requirements to win a UDRP. The complainant must also show that the registrant had no rights or legitimate interest in the name and the domain was been registered in bad faith. The panel did not weigh in on the latter two because of the lack of trademark.

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Cybersquatters launch 10,000 attacks a week on top brands

Top brands face up to 10,000 “brandjacking” incidents a week from cybersquatters who are trying to pass off fake sites as genuine, according to new statistics from researcher MarkMonitor.

The direct cost of removing each one using a Uniform Dispute Resolution Policy process at ICANN, the top internet domain registry, is around £4,000 per incident. Legal fees can add thousands per incident.

Fortunately, relatively few people are responsible for most of the brandjacking, said Charlie Abrahams, vice-president and general manager of MarkMonitor. This allowed companies to identify the individuals behind the scams and to get a blanket injunction against them, he said.

“These guys are very organised and very sophisticated,” Abrahams said. He said some are using obscure but legitimate domain registries such as .cm (Cameroon) or .co (Colombia) to register generic and brand names like or or They hope to catch people who misspell the URL they really want or that search engines will deliver the “wrong” link together with the legitimate site.

They also set up automated watch lists to see when a legitimate domain name comes up for renewal. They hoped to re-register it in their own name before the real owner renewed it, Abrahams said.

Abrahams said CIOs needed to put their names on to auto-renewal and ensure that all their websites were registered in their employer’s name. “It is surprising how many domain names for large brands are registered to former IT managers or website developers,” he said.

Abrahams said the study is based on MarkMonitor’s investigation of brandjacking incidents at 32 of Interbrand’s Top 100 brands. The study found cybersquatting up by one-third over last year, and phishing attacks against retailers quintupled.

With cybersquatting, a non-brand owner registers as his own a well-known brand or a domain very close to or simply misspelled. This is by far the most common form of brandjacking, said Abrahams. Others include false association, domain kiting (using a domain name until the internet’s domain name servers know who the rightful owner is), pay-per-click fraud and phishing, among others.

The study found 382,000 incidents of cybersquatting, 73,000 cases of false association, and 27,000 pay-per-click frauds. But there were bright spots. Paid search abuse halved, which meant there were also fewer objectionable pop-up advertisements and e-commerce abuses, Abrahams said.

Abrahams said more brands are under attack. Abuses aimed at motor vehicle makers were up 83%, with 95,000 in the last quarter of 2007 alone. There were two-thirds more attacks on food, beverage and other consumer packaged goods targets, while attacks on clothing brands were up 50%.

Traditional targets such as banks and media companies were up 23% and 38% respectively, the study found.

Abrahams said the US hosted most brandjacking sites (68%), followed by Germany (9%), the UK (4%) and Canada (4%).

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Cyber-squatters reaping rich rewards

Cyber-squatting continues to be the most prevalent form of online brand abuse after a 33 per cent jump in the past year, new research reveals.

The latest Brandjacking Index from MarkMonitor found significant drops in domain kiting and related pay-per-click fraud.

MarkMonitor attributed this trend to aggressive legal action by brand holders as well as increased scrutiny by domain registrar Icann.

However, phishing techniques and targets continued to evolve in 2007, and the report highlighted a 533 per cent increase in phishing attacks against the retail and services sector.

“Brand-jackers continue to sharpen their techniques to reap greater profits, as demonstrated by this quarter’s accelerated threats to mainstream industries and their customers,” said Irfan Salim, president and chief executive at MarkMonitor.

“But brand holders have proven that they can fight back, and we have witnessed an incredible turnaround in domain kiting and pay-per-click abuse.”

Cyber-squatting rose 33 per cent over 2007, making it the most perpetrated form of abuse and highlighting the increased use of brand names and trademarks to drive traffic to illegitimate, unauthorised or offensive sites.

Instances of domain kiting, which involves deleting a domain name during the five-day grace period and immediately re-registering it for another five-day period, declined 14 per cent in 2007.

MarkMonitor believes that this decline is closely linked with successful lawsuits filed by large brand holders against enabling registrars, along with a greater application of laws against cyber-squatting and counterfeiting.

Instances of pay-per-click fraud, an abuse closely associated with domain kiting, also dropped to a yearly low in the fourth quarter.

MarkMonitor found that brand-jackers are increasingly shifting their focus to mainstream industry targets, including automotive, food and beverage and consumer packaged goods.

Abuses of automotive brands increased by 83 per cent in 2007. Similarly, food and beverage brand abuse increased 63 per cent, consumer packaged goods increased 62 per cent and apparel increased 49 per cent.

The only industry segment to decline in 2007 was high technology which shrank slightly by 10 per cent over the course of the year.

The report also found that phishers are targeting more organisations and shifting their focus to new industries.

MarkMonitor reported that 412 organisations were targeted in the fourth quarter of 2007, an increase of 38 per cent from the previous quarter and 37 per cent over the year.

“Criminals and fraudsters around the world continue to develop new and adaptive ways to take advantage of brands,” said Frederick Felman, chief marketing officer at MarkMonitor.

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Local resident, Microsoft settle Web name suit

Software giant Microsoft reached a confidential settlement with a Fort Wayne man accused of trademark infringement.

This month, attorneys for Microsoft and Anthony Peppler signed an injunction that brought about the dismissal of the months-old federal lawsuit.

While the terms of the financial settlement were not made public, the injunction will prevent Peppler from engaging in the conduct that sparked the lawsuit in the first place. Peppler and his companies, , Inc., Modern Limited-Cayman Web Development, Express Personnel Advertising, Cayman Trademark Trust and JIT Limited, as well as 10 unnamed individuals, are prohibited from registering Internet domain names similar to names of Microsoft products and services.

Microsoft accused Peppler of creating Internet domain names that are “confusingly similar” to marks owned by Microsoft, in violation of Anticybersquatting and Consumer Protection Act, according to the court documents.

The practice, known as “typo squatting,” involves registering Internet domain names similar to licensed trade names, according to experts.

According to court documents, Peppler is prohibited from “registering, using or trafficking in any domain name that is identical or confusingly similar to Microsoft’s marks, including but not limited to domain names containing Microsoft’s marks and domain names containing misspelling of Microsoft’s marks,” nor can he help someone else create such domain names.

Microsoft had sought $100,000 in damages per domain name. With all the domain names Microsoft links to Peppler, he could be on the hook for $9.5 million and that does not include the punitive damages and the surrender of all “ill-gotten gains.”

A federal judge dismissed the lawsuit after the settlement.

The Wild World of Domain Names

The nomenclature of domain name law is just plain fun. Concepts such as phishing, typosquatting, tasting and kiting all have legal relevance to domain names and, more importantly, how our clients encounter domain names in their businesses.

Most of the attention to date has been focused on phishing and typosquatting, but tasting and kiting can have an impact that is not as apparent but no less real. Both tasting and kiting have been heavily criticized, and both are under attack by Internet Corporation for Assigned Names and Numbers, with some help on kiting from Google.

The common situation arises when a client fails to renew a domain name registration when that registration expires. There are systems in place, of course, to prevent that from happening, ranging from calendered reminders at the client level to an auto-renewal feature with domain name registrars. All are imperfect, however: an expired credit card tied to an auto-renewing domain name and an old e-mail account can add up to a failed registration renewal.

Whatever the reason, if the domain name registration fails to renew, and the domain name enters the open market, then the client will almost certainly have a problem with retrieving control of that domain name. The strong likelihood is that any domain name that is associated with an active Web site that comes up for renewal will be purchased as soon as it becomes available, whether or not the purchaser has any articulable need for the specific domain name. The purpose of this: to ‘taste’ the domain name to see whether it attracts traffic and, as a result, is a potential source of revenue for the new owner.

Tasting takes advantage of a five-day “add grace period” that is a current feature of domain name registration. This grace period allows the purchaser of a domain name registration to return the name to the pool of available names within five days of registration, with a full refund of both the registration fee charged by the registrar and the ICANN fee (20 cents) that it receives for each registration. (Some tasters reduce their exposure further and operate as domain name registrars.)

A domain taster will monitor the traffic that its newly purchased domain names attract during the add grace period, and will keep the domains that are likely to generate revenue while releasing the ones that are not. There is very little risk to the domain taster, since it will receive a refund of all of its registration and ICANN fees paid for any unprofitable domain that it chooses to release.

Lest you think domain tasting is small potatoes, consider the sheer numbers of domains affected by this practice: ICANN reported that in January 2007, the top 10 domain tasters accounted for more than 45 million deleted .com and .net domain names, about 95 percent of all deleted domain names in those two domains.

Bob Parsons, the CEO of, a domain name registrar, noted that of 764,672 domain names registered in one day on March 31, 2006, about 92 percent of them, or 703,503, were dropped just before the grace period expired.

The high level of activity explains why a client that fails to renew its domain name registration within whatever renewal grace period is offered by its registrar is likely to lose control of the name. If the client domain attracts even a small amount of traffic, and that traffic brings revenue to the site that the taster builds for that domain name (through the use of “click-through” ads, for example), the domain name will be retained by the taster and added to its stable of money-making domains.


Domain name kiting is a variant of tasting. It is simply the process of sequentially registering a domain name, dropping it within the grace period and re-registering it as soon as it is dropped — over and over again.

A kiter can control a domain name for a significant period of time without ever having to pay for the privilege.

Up to now there has been virtually no downside risk to domain name kiting; there is, for example, no requirement that the registrant have a bona fide intention of using the domain name in any particular manner, as there is for trademarks.

ICANN announced in late January that its board had approved dropping the ICANN fee refund for domain names that are released during the add grace period.

Registrants would still receive a refund of their domain registration fees, but the 20 cent annual fee that ICANN receives would remain with ICANN. While this may not seem to be a significant penalty to impose on those who take advantage of the add grace period, it is a much larger cost than the zero cost that is presently imposed for dropped registrations. And for a domain name kiter, it is a cost that will reassert itself every five days for each kited domain name in its portfolio, such that the yearly cost to kite a domain name would far exceed the annual cost of purchasing it.

Shortly after the ICANN announcement, Google entered the fray by announcing that it is going to stop allowing domains that it considers to be “kited” to run — and profit from — Google-placed ads on the kited sites. It is employing a new domain kiting detection system, and will block kited domains from displaying Google “Ad Sense” advertisements.

The combination of the two initiatives is likely to have a significant impact on both tasting and kiting.


Domain Name Law and Regulation Seminar & Book Launch

International Domain Name Law - ICANN and the UDRP by David Lindsay cover imageThere will be a seminar on domain name law and regulation, and launch of the book “International Domain Name Law: ICANN and the UDRP”, in Melbourne on Wednesday 20 February for our Australian readers. Continue reading Domain Name Law and Regulation Seminar & Book Launch

How Rampant is Cyber & Typo Squatting? Just Ask WIPO After Reviewing!

Enrico Schaefer imageby Enrico Schaefer
How prevalent is cybersquatting and typosquatting asks Enrico Schaefer in this article in Circle ID? He suggests taking a look at, and then comparing it with the World Intellectual Property Organisation’s web site at Enrico goes on to say, “Ironically, the WIPO Arbitration and Mediation Center handles a majority of the UDRP domain dispute arbitrations internationally. The very organization which is invested with the authority by ICANN to resolve cybersquatting and typosquatting disputes internationally under the UDRP is, by all appearances, being squatted.” Continue reading How Rampant is Cyber & Typo Squatting? Just Ask WIPO After Reviewing!