New Tool in the Fight Against Cybersquatting

Like the recent decision to allow contributory cybersquatting as a cause of action under the AntiCybersquatting Consumer Protection Act (ACPA) that we blogged about in January, another recent court decision could provide brand owners with valuable precedent in future proceedings against cybersquatters.

This decision was handed down in a civil suit, The North Face Apparel Corp. et al. v. Fujian Sharing Import & Export Ltd. et al, where the judge ordered the defendants to transfer approximately 100 cybersquatted domains (many of which were peddling counterfeit merchandise). The defendants failed to comply, and simply moved their operations to a group of different domain names not identified in the injunction.

In response to this action, the judge issued a unique contempt order. This included the following provisions:

  • Plaintiffs are authorized to shut down newly discovered counterfeit websites owned or controlled by the defendants as they are identified, to transfer the domain names, and to confiscate any profits from the selling of counterfeit products on those websites without further court order;
  • Infringing registries are required to temporarily disable the newly located domains after two days and then to transfer the domains to plaintiffs after an additional ten days;
  • An ISP which hosts one of the identified counterfeit websites owned or controlled by the defendants must deny access to the IP addresses utilized by those websites within three days of receiving notice of the order; and
  • “Internet providers,” including ISPs as well as back-end service providers, web designers, sponsored search engine or ad-word providers, and any parties delegating IP addresses must also cease providing supplying services to the defendants within two days of receiving notice of the order.

The judge’s order enables the plaintiffs to pursue relentless squatters without having to bring new motions for each new domain name the squatters register. Essentially, this decision could be a powerful tool for brand owners to get ahead of the “whack-a-mole” game that enforcing against cybersquatting often becomes.

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