CASE STUDY BRIEFS

By Dave Wolkowitz

Squashing Squatters: Richard Stockton

Richard Stockton (JD ’00) is an attorney practicing IP law at Banner & Witcoff in Chicago. He recently helped a well-known Chicago company retake its domain name from a sophisticated cybersquatter.

The Anti-Cybersquatting Consumer Protection Act of 1999 prohibits the proactive offering to sell squatted domain names, so cybersquatters buy domain names, then wait for offers to buy. According to Stockton, the squatters often make up stories to justify their ownership of the domain name in an attempt to play coy until the buyer raises his offer price to an acceptable amount. . . sort of a back-door approach to extortion.  

Stockton could have pursued ICANN arbitration, but didn’t like the dynamics of arbitration nor the cybersquatter’s 2-0 winning record in similar arbitrations involving domain name disputes.

“I decided to forego ICANN arbitration and go straight to the big leagues with a federal complaint.” Stockton said. “In arbitration, the cybersquatter could make up any story he liked, and there’s no opportunity to directly cross examine him or to compel him to prove his story’s validity.”

To support his client’s assertion that the squatter illegally possessed the domain names, Stockton researched the squatter’s past disputes and talked with other companies who had battled the same squatter. Based on that research, he was able to establish a clear pattern of squatting domain names with the purpose of selling them to rightful owners.

Then Stockton got down to business.

“We had two versions of our complaint ready. We filed one with the U.S. District Court of the Northern District of Illinois,” Stockton said. “But we kept one that contained more information derived from our research.”

After filing the first motion and thereby demonstrating his client wasn’t going to give up and would go to court if necessary, Stockton presented the squatter with the ace up his sleeve – the complaint that detailed the squatters colorful past. 

“We threatened to file it and used it as leverage. He originally said he didn’t care, but that was his whole game – bluffing. Then he backed down,” Stockton said.

To avoid the risk of a trial, the squatter transferred ownership of the domain name to Stockton’s client and paid attorneys’ fees. 

Delivering Justice: Jennifer Van Kirk

As if battling the weather and the pit bull chained to your neighbor’s gate wasn’t enough, postal workers also have to worry about cybersquatters.

Jennifer Van Kirk (JD ’96), co-chair of the IP group at Lewis & Roca in Phoenix, won a summary judgment in a cybersquatting case for her client, the United States Postal Service. The dispute was over the ownership of the domain name “postal-service.com”.

In response to a cease and desist letter from the U.S Postal Service, Zipee – the owner of “postal-serivce.com” at that time - filed a declaratory judgment action claiming non-infringement. The United States Postal Service then filed a counterclaim alleging trademark infringement, dilution and cybersquatting in an effort to obtain ownership of the “postal-service.com” domain name.

On behalf of her client, Van Kirk provided expert testimony and linguistic evidence that traced usage of the phrase “postal service” to the mid-1800’s. Additionally, she provided consumer survey evidence which indicated that the term “postal service” was a protectable trademark because it served as an identifier of source.    

“The surveys were particularly interesting because we conducted them both via shopping malls and online,” Van Kirk said. “We were able to prove confusion by using the visitor logs for the defendant's Web site to show that many consumers who ended up at defendant's Web site were actually seeking the usps.com site.”

Van Kirk said the case – decided in the year 2000 - was one of the earliest decisions interpreting the Anti-Cybersquatting Consumer Protection Act of 1999.

Interview conducted by Dave Wolkowitz, a Chicago-based freelance writer. Contact him at [email protected].