Group wants to model law after Utah legislation.
Coalition Against Domain Name Abuse (CADNA) is pushing to amend the 1999 Anti-Cybersquatting Consumer Protection Act (ACPA) to include provisions in a 2010 Utah cybersquatting law.
Phil Corwin, counsel for the Internet Commerce Association, notes that CADNA is recruiting a sponsor and no bill has been introduced yet. Thus, it’s impossible to know the exact details of how the group wants to amend the act.
That said, the Utah legislation increases damages for cybersquatters and allows trademark owners to sue “affiliates” that enable cybersquatters to operate. Corwin notes:
So expanding the scope of potential liability beyond domain registrants to their “affiliates” (a term that is not defined in the Utah law) is one significant change. That change could apply to every affiliated entity associated with and controlled by an individual or company holding a domain portfolio.
Another is a significant increase in potential civil money penalties, with the Utah law providing plaintiffs with the option to opt for very stiff statutory damages without any requirement to prove actual damages and economic harm. Further, a presumption that damages are $100,000 per domain where there is any pattern or practice of cybersquatting is very worrisome, as what constitutes a pattern or practice is likewise not defined – it might be as few as two past UDRP losses.
Here’s the first part of the email CADNA sent out:
Subject: Putting a Stop to Domain Cybersquatting
> From: The Coalition Against Domain Name Abuse
> Date: Fri, January 20, 2017
> 2017 is the Year to Combat Cybersquatting and Make the Internet Safer for Business and Consumers Cybersquatting is a global problem that businesses and their customers face. It’s been 17 years since the original cybersquatting legislation (ACPA) was passed and since then not updated to reflect the growing problems of malware dissemination, phishing scams, and counterfeit goods sales via trademark-infringing domain names. While a global solution to the problem would be ideal, the U.S. appears to be the most likely place to realize an updated anti-cybersquatting law in the near future. We believe that the 2010 Utah E-Commerce Integrity Act* can serve as a model for federal legislation to protect businesses, their brands, and consumers by making cybersquatting riskier and less lucrative for perpetrators, and the 2016 general elections outcomes for both the U.S. Congress and the White House present a unique and timely opportunity to push through legislation modeled on the Act. The Coalition Against Domain Name Abuse (CADNA) is now mobilizing the global business community to promote and pass legislation that will greatly enhance the available protection mechanisms for online trademark protection and limit the appeal of cybersquatting. Already well known on the Hill for our efforts to amend cybersquatting laws, we are well positioned to leverage the transformed political landscape and the post-IANA transition world toward this effort. Now, more than ever, CADNA needs your help to accelerate our activities. We invite you to join other global brands as we undertake this exciting work in 2017. For more information about how you can participate in CADNA’s efforts to secure legislative relief for trademark owners against cybersquatters, please contact us. CADNA is a nonprofit founded in 2007 by a group of trademark owners and is run by FairWinds Partners. CADNA’s goals are to raise awareness among consumers and governments about the dangers and costs associated with domain name cybersquatting, and to bring about changes in law that will reduce the incidences of trademark infringement in the domain name space.
While Internet Commerce Association’s code of conduct prohibits intentional cybersquatting, Corwin writes that “enactment of Federal law based upon the Utah act would provide trademark owners with powerful new tools to bring potentially crushing litigation against domain owners and all their affiliates, and to receive high damages absent any need to prove actual economic harm.”
Joseph Peterson says
The “legislation … allows trademark owners to sue ‘affiliates’ that enable cybersquatters to operate.”
“Affiliates” to include parking companies, possibly? I might go against some of my colleagues here in opining that it might be a GOOD thing if cybersquatting cases roped in the parking companies too instead of targeting just domain owners.
Common defense. Shared responsibility. And better education for complainants and panelists who misunderstand how parking works.
John Berryhill says
Parking companies will simply compensate by turning off domains on demand, regardless of the merit of the underlying claim.
Joseph Peterson says
I’d be okay with that. Parking isn’t a significant part of the business model for most newly arrived domainers. PPC ads are a liability I’d prefer to be without. And to me parking has always seemed like a dinosaur this industry ought to evolve beyond.
People who do rely on parking and find a few of their domains have been “turned off” due to TM complaints – well, they can coordinate with their parking company to manage settings for those disputed domains. Or move domains to a more accommodating parking platform.
Maybe giving TM holders more access to this lesser power of turning off parking would alleviate some of the pressure that spills over into UDRP complaints.
Phil Corwin told me just now that “affiliates” would likely not be interpreted as parking companies and upstream ad providers (e.g. Google) … but, rather, other business assets connected with the domain owner. Which sucketh basketballs.
Too bad! I’d love to see those companies dragged into every UDRP and lawsuit alongside registrants. Strength in numbers. Even a reluctant ally is an ally.
C. S. Watch says
‘…the 2016 general elections outcomes…present a unique and timely opportunity to push through legislation modeled on the Act.’ If this letter were any more crass and transparent it could win a Daytona wet t-shirt contest. Fairwinds Partners (Phil Lodico and Josh Bourne) have that hilariously low self-awareness that BAs from Hobart and U.Richmond aren’t strong enough to buff out. They’re calling CADNA a non-profit. That’s like calling Warren Jeffs a dating guru.
You want to call this a bill about phishing? Then delete the ‘Cybersquatting’ section whereby million-dollar domain name assets would be stolen from small businesses by tossing off a two-second threat email to registrars. Unconstitutional stripping would serve ‘domain acquisition’ firms like Fairwinds, since that’s how they make their money, but it would be a public relations deathtrap for their clients.
The ‘Cybersquatting’ section can’t survive due process because it would mean rampant theft and catastrophic loss. Enough of our federal court tax dollars were already wasted repealing half-baked legislation from this thumb-puppet Urquhart. We’re not paying for another repeal just so two domain brokers in DC can drum up business.
There are about seven corporations whose dim middle-managers have put their name to CADNA. Will someone clue them in, please. They’re paying off like green grocers to stamp out irrelevant domain names based on scare-mongering from firms like Fairwinds. One of a thousand of these names is worth a UDRP or even a C&D. Firms like Fairwinds manufacture this revenue stream. Read GlassDoor or Twitter, you rubes.
Phishing is a problem solved with PSAs about address bars, not by trying to staunch an infinite tide of penniless wingnuts in the developing world. And CADNA members’ middle managers should try typing in global.amazon. Maybe they’ll begin to plot the dots on how this milking machine works. And how the consumer phishing victim is collateral damage that tracks back to their own marketing naiveté.
Stella Long says
It is quite understandable that in the days when only .com and .net were available, brand owners and trademark holders would have had serious cause for concern if someone else were to somehow own their trademark.com. These few TLD’s were the only paths to recognition on the world wide web.
Now with two thousand + new TLD’s coming on stream (not twenty, not two hundred, but TWO THOUSAND +), and an almost infinite number more possible, is it fair, or reasonable, to suggest or consider that the owner of a trademarked phrase or slogan, a phrase which is in common every day use in commerce or advertising should deprive the public, and all of industry, all over the world, of the right to enjoy and benefit from all 2000+ instances of the use of this phrase even though the use of it is not in relation to the goods or services provided by the mark holder? One can understand that if a mark is inherently distinctive or has acquired secondary meaning, or if the use of it is likely to cause confusion, then the mark owner has a right to vigorously fight infringement. But short of this it is neither fair, nor reasonable, nor should it be lawful, to restrict its use. So what if it a.TLD is appended to it, to allow the user to move to the digital platform? Does this magically make the use that phrase unlawful?
What about hashtags? are we going to limit the use of common communication phrases as hashtags because someone owns a trademark on that commonly used phrase? A hashtag leads to a digital platform also.
The people managing the domain name system should wake up and realize that we are no longer in Year 2000.