Domain Name Dispute Resolution

Our Approach

How brand names appear on the web is an integral part of an organization’s brand identity. We offer our clients a full spectrum of services to support their online identities by establishing, maintaining, protecting, and enforcing their business or entity’s online trademark rights, copyrights, and domain names.

Our attorneys are highly experienced in assisting clients in developing viable domain name strategies tailored to their individual needs. We work with clients to create and select effective domain names and assist them with the acquisition, registration, and enforcement of brand name rights on the web.

Our domain name protection service offerings include:

• Recording companies’ trademark portfolios with the Trademark Clearinghouse;
• Developing and implementing sunrise registration strategies. The sunrise period precedes general domain name registration availability. It is a special period during which trademark holders may preregister names that are the same or similar to their trademarks to avoid cybersquatting;
• Developing and implementing sunrise registration strategies. The sunrise period precedes general domain name registration availability. It is a special period during which trademark holders may preregister names that are the same or similar to their trademarks to avoid cybersquatting;
• Policing and monitoring of gTLDs for infringing uses of trademarks as cybersquatters move in on new domains;
• Bringing URS, UDRP,PDDRP and other actions to quickly secure trademark holders’ rights when a registration violates a client’s rights;
• Assignment, merger, name change, and security interest recordation services;
• Civil actions under Anti-Cybersquatting Piracy Act (ACPA);
• Domain name registration and dispute resolution;
• Keyword and sponsored link advertising on search engines;
• Negotiation of domain name transfer agreements and releases;
• Registration of domain names, including advice regarding defensive registrations;
• Selection, procurement, protection, recovery, and enforcement of domain names; and
• TLD strategies.

Areas of Service

Anti-Cybersquatting & Uniform Domain-name Dispute Resolution Policy (UDRP) Proceedings

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) offered through the Internet Corporation for Assigned Names and Numbers (ICANN) is a quicker and less-costly proceeding than federal litigation that allows trademark owners to challenge an infringing domain name registration. Our attorneys have extensive experience assisting clients who seek to protect their trademark rights through UDRP proceedings. We routinely handle UDRP proceedings before agencies such as the World Intellectual Property Office and the National Arbitration Forum. David Einhorn, chair of our Technology Law Practice, has decided over 250 UDRP cases as arbitrator.

ACPA Proceedings/Cybersquatting

The 1999 Anticybersquatting Consumer Protection Act (ACPA) provides additional protection against cybersquatters who register domain names in bad faith, and provides the opportunity to obtain monetary damages. Scarinci Hollenbeck represents clients in ACPA proceedings in the federal court.

Trademark Issues & Claims Involving Social Media

The continued growth in social media usage has generated a host of potential trademark issues. We safeguard our clients’ social media presence, protecting them against the unauthorized use of their marks. Scarinci Hollenbeck attorneys are well-versed on everything from trademark protection for hashtags, user names, and brand identities to compliance with social media policies.

New Generic Top-Level Domain Names

The Internet Corporation for Assigned Names and Numbers (ICANN), the entity established to oversee operation of the Internet, recently created a new gTLD program. This led to the creation of more than 1,000 new gTLDs, beginning in 2013. The existing environment of generic top-level domains (gTLDs), such as .com, .net, and .org, is vastly expanding, causing both serious and immediate concerns and significant opportunities for businesses.

Our attorneys have experience guiding clients through the gTLD landscape and have helped formulate protection mechanisms for trademark holders in the new system. Whether you are a brand owner or applicant, we can assist you wide range of issues pertaining to the launch of the new gTLDs, including:

• Developing a brand-protection strategy;
• Maximizing opportunities the new gTLDs offer to acquire desirable domain names;
• Positioning you or your company to be awarded the gTLD(s) and second level domain names for which you have applied;
• Assisting with ICANN registry contracts and vendor agreements;
• Complying with the gTLD rules and competition laws if you will be operating an open generic TLD;
• Navigating numerous dispute-resolution procedures; and
• Litigating or defending claims in federal court.