[bc-gnso] interesting developments in a US cybersquatting case involving private registrations

[Mike Rodenbaugh]

Thanks Mikey for forwarding.  Copying the RAP team for their info as well.

Overall, I do not think this development is all that new.  Registrars have
never been able to claim ACPA immunity when they are doing more than merely
registering a domain name, and thus move into the realm of 'monetizing' or
'trafficking' in domain names.  One potentially interesting aspect of this
ruling is that it does not allow Oversee to hide behind all of its various
corporate entities, one providing privacy services, one providing
monetization, etc., but instead they all appear to be lumped together, at
least at this stage of the proceedings.  I haven't gotten into the details
of this much, but that is my first impression.

Curious to hear others' views on this.

Mike Rodenbaugh
RODENBAUGH LAW
548 Market Street
San Francisco, CA  94104
(415) 738-8087
http://rodenbaugh.com 

-----Original Message-----
From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of
Mike O'Connor
Sent: Tuesday, December 15, 2009 5:51 AM
To: bc - GNSO list
Subject: [bc-gnso] interesting developments in a US cybersquatting case
involving private registrations


here's the argument, from TransAmerica, that persuaded the judge that
Moniker was acting as more that a registrar, and thus not immune from the
ACPA;

> In this case, Transamerica alleges that Oversee and the Moniker
Defendants, together with the ostensible registrants - the John Doe
Defendants - are the de facto registrants of the domain names in question.
Transamerica claims that Moniker was not merely acting as a registrant in
providing registration services to the John Doe Defendants for the
infringing domain names, but instead was part of a scheme to profit from the
use of the infringing names. As Transamerica points out, Moniker receives a
fee each time an internet user clicks on one of the links attached to the
infringing domain sites; such payment establishes at least partial ownership
in the domain name. (See Hearing 63, 67). Transamerica's Amended Complaint
alleges that Moniker Online provides registration services, Moniker Privacy
protects the identity of the ostensible registrant, and Oversee provides the
monetization service to the domain name. (See id. at 65). Together, these
three Defendants are part of a sc!
 heme by which they profit from the misuse of others' trade and service
marks. (See id.). These allegations, taken as true as they must be on a Rule
12(b)(6) motion, satisfy the requirement that Defendants be acting as more
than registrars so as to strip them of immunity under the ACPA.

here's the link to the article;

http://domainnamewire.com/2009/12/14/judge-nixes-monikers-motion-to-dismiss-
repercussions-for-domain-registrars/

mikey


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