NET GAIN: Trademark law extends into cybersquatting arena

In the Internets early days, back in the mid 1990s, the World Wide Web was often compared to the lawless Wild West. But in the field of trademarks and brands, it was more like the Oklahoma Land Rush of 1889 as digital speculators and schemers moved quickly to claim domain names for the sole purpose of making it rich by eventually selling the names to companies that were slow to realize the commercial value of the Internet.

As improbable as it seems now, a 1995 survey found companies such as Coca-Cola and Hertz were unaware their brands had been registered as domain names by what became known as cybersquatters.

For a while it was a free-for-all. A fellow actually registered the domain name mcdonalds.com. Another visionary co-opted www.whitehouse.com, turned it into an adult web site, and retired a millionaire. Sprint registered its competitors name, mci.com, and Avon paid big bucks to buy its domain name from a party that had gotten to www.avon.com first.

The passage in 1999 of the Anticybersquatting Consumer Protection Act and the evolution of regulations such as the Uniform Domain Name Resolution Policy, created by the Internet Corporation for Assigned Names and Numbers, helped settle things down a bit and cybersquatting isnt as rampant as it was. Selling an infringing domain name is now actually evidence of bad faith.

But it was during that exciting time of emerging technology clashing with existing trademark law that Anessa Kramer graduated from George Washington University Law School.

To me it feels like the emergence of the Internet directly coincided with my entry into the practice of law, she says.

After graduating from Michigan State University at the age of 20 and feeling she wanted some adventure, Kramer packed up her car and drove to San Francisco with $900 in her pocket. For the next three years, she waited tables, bartended, and sold mens clothes. She traveled a lot. She appeared as an extra in television, film, and print projects. It was her dabbling in the entertainment industry during those years in San Francisco that led her to think about studying entertainment law when she went to law school, which was never far from her mind.

I always knew I was going to law school, she says. It was just a question of when.

Initially thinking of going into entertainment law, she reconsidered when a law clerk told her she would spend most of her time reviewing contracts.

That wasnt what I was looking for, says Kramer. I wanted a field where I could interact with creative people.

A fellow law student suggested she look at trademark law.

It was a great fit for me, says Kramer. Ive never regretted it. Its something I find interesting every day.

She has forged a legal career on the cutting-edge of trademark law, managing several international trademark portfolios. After practicing at Brooks Kushman for 9-1/2 years and joining Honigman 18 months ago, this year alone she has reclaimed domain names for Jaguar and Land Rover that were registered by cybersquatters and obtained a preliminary injunction and monetary damages for Seattles Best Coffee.

Trademark work has increased over the past decade, according to Kramer. In the last 10 years, Honigmans intellectual practice has grown from 10 lawyers to 33. Most of that growth, however, has not been fueled by opportunities in Michigan. Rather, trademark law has become an international practice and companies are learning their trademark lawyers can be anywhere.

In a relatively inexpensive market, Kramer sees Detroit firms becoming increasingly attractive to companies looking to cut costs and seeking out lower legal fees without sacrificing the quality of the representation.

The law surrounding trademarks and the Internet is evolving, even as cybersquatting is becoming less common. Some cybersquatters may still hope that
a company will approach them about selling a domain name, but most of them are trying to confuse consumers into thinking a site is legitimate.

These days you see clients pursuing a more focused approach where theres actual content on a website thats confusing, says Kramer.

The evolving law has led to some confusion. Kramer contends that there has not been a lot of consistency in decisions coming out of the circuit courts and she believes a number of Supreme Court decisions over the next five years will bring clarity to some of those inconsistencies.

Fighting an infringement has its challenges, says Kramer. Much of the time, you might not know who the domain name owner is; privacy services protect the owner and tracking them down is sometimes impossible. Other times, the party is simply overseas and reaching them is difficult.

A victim of cybersquatting who cannot resolve the dispute through negotiations has a couple options. They can sue in federal court under the provisions of the Anticybersquatting Consumer Protection Act or pursue arbitration through a system created by the Internet Corporation of Assigned Names and Numbers.

The majority of domain name conflicts, however, are resolved through arbitration, according to Kramer, because it is faster and less expensive.

By Brian Cox

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