The internet, which is still a new phenomenon to many areas of the law, has greatly expanded the potential for infringement of trademarks and personal names. The act of registering someone else’s trademark or personal name as an internet domain name without authorization is known as “cybersquatting.” While proving a case of cybersquatting presents challenges, some plaintiffs have succeeded in court. The Ninth Circuit affirmed part of an Arizona federal court’s decision last year awarding $6.6 million to a plaintiff claiming cybersquatting and other causes of action. Skydive Arizona, Inc. v. Quattrocchi, et al, No. 10-16196, slip op. (9th Cir., Mar. 12, 2012).
The plaintiff, Skydive Arizona, operates one of the world’s largest and best-known skydiving centers in Eloy, Arizona. It has used the “SKYDIVE ARIZONA” mark since 1986. The defendants operate SKYRIDE, which the court called “a third-party advertising and booking service for skydiving centers” around the country. Id. at 2921. SKYRIDE had numerous websites that it used to advertise skydiving events and opportunities in various locations, including several that specifically referenced Arizona, such as PhoenixSkydiving and TempeSkydiving. It also had websites for its own business, including skydivearizona.net and arizonaskydive.com. SKYRIDE had no facilities in Arizona., and it did not do business with the plaintiff.
Skydive Arizona sued SKYRIDE in 2005 for false advertising, trademark infringement, and cybersquatting. The plaintiff alleged that SKYRIDE misled consumers about its presence in Arizona and traded on the plaintiff’s goodwill. The trial court granted partial summary judgment for the plaintiff in early 2009 on the false advertising claim, and a jury found in the plaintiff’s favor that October on the other two claims. The total damage award exceeded $6.6 million, including $600,000 in statutory damages for cybersquatting. This amounted to $100,000 for each of six domain names. The Ninth Circuit affirmed this part of the damage award.
The Skydive case avoided some of the pitfalls that may appear in cybersquatting cases. The plaintiff had to prove that the defendant registered the allegedly infringing domain names in bad faith. In another recent case, a federal court in Washington DC would not dismiss cybersquatting claims as stated in its opinion. Xereas v. Heiss, No. 12-456, mem. op. and order (D.D.C., Mar. 27, 2013).
The nature of the internet itself presents another difficulty for cybersquatting cases, as a plaintiff must be able to identify the party or parties that have allegedly infringed the plaintiff’s rights. In another Washington, DC case, the plaintiff was unable to identify the registrant of the allegedly violating domain name. Vizer v. VIZERNEWS.COM, No. 11-00864, mem. op. (D.D.C., Jun. 22, 2012). The plaintiff therefore filed the lawsuit as an in rem action based on the location of an office of the Internet Corporation for Assigned Names and Numbers (ICANN) in Washington. The court dismissed the lawsuit, finding that the presence of an ICANN office nearby did not give it in rem jurisdiction over the domain name.
The internet defamation attorneys at Lubin Austermuehle have decades of experience representing businesses and consumers throughout the greater Chicago area and Mid-West regions, including Illinois, Indiana, Iowa, and Wisconsin. We assist individuals and businesses who are the victims of cybersquatting, and we defend clients against allegations of cybersquatting by competitors or others. To schedule a confidential consultation with one of our attorneys, please contact us today online, at (630) 333-0333.
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