Practice Area

Domain Name Litigation And Transactions

The attorneys at Rome LLP have a deep understanding in advising businesses, registrars, registries, domain buyers/sellers, and other domain-related service providers in litigation and transactional matters.

Our attorneys have counseled numerous clients in cutting-edge matters in both the U.S. and internationally in connection with issues related to domain name acquisition, protection, recovery and management. Our attorneys have significant experience in litigating and providing analysis on complex cross-jurisdictional domain matters as well as in providing strategic advice in business matters, including monetization and security of domains and IP protection.

For our registrar clients, we have successfully defended countless contributory and direct claims of trademark infringement, copyright infringement and defamation claims, successfully invoking safe harbors provided under the DMCA, the CDA, anti-SLAPP and, in matters of first impression, applied various new statutes to shield registrars from liability. In regulatory matters, we have litigation accreditation issues and have prosecuted arbitrations on behalf of registrars and against ICANN.

In transactional matters involving registrars, we have handled all forms of ICANN accreditation issues. We have counseled registrars and registries through bulk transfers and partial-bulk transfer under BTAPPA protocols. Our lawyers have negotiated complex portfolio management issues, managing both private and regulatory issues.

For our registry clients, we have counseled and spearheaded extension application efforts, extension buy-outs, contested proceedings and advised on extension auction matters.

Establishing And Defending Your Domain:

The domain name attorneys at Rome LLP will work with you to:

  • Prosecute and defend actions under the federal Anticybersquatting Consumer Protection Act (ACPA)
  • Take action against “typosquatters” who infringe on your property through user keystroke error by recapturing domain name “typos” and taking strategic in rem actions
  • Represent your business in domain name arbitrations, seizures and disputes before the World Intellectual Property Organization (WIPO) and the National Arbitration Forum
  • Represent your business in accreditation issues before the Internet Corporation for Assigned Names and Numbers (ICANN)

Our Results

  • In Verisign v. XYZ, LLC, et al., our attorneys successfully represented the administrator of the .XYZ extension and CentralNic, a public domain registry, in a tortious interference action brought by Verisign, by reaching a favorable settlement for our clients following strategic resolution of key issues at the pleading stage.
  • In representing our client Namecheap, we initiated an action against 46 domain names and domain name registrants that were infringing on Namecheap’s trademarks. Our attorneys obtained a $1.3 million judgment on behalf of Namecheap as well an injunction prohibiting further infringement and ordering the transfer of the offending domains to Namecheap.
  • In a seminal case, SolidHost, N.L. v. Namecheap, Inc., our lawyers defended a domain registrar and private registration service against third-party beneficiary claims brought under the ICANN Registrar Accreditation Agreement.  In a precedent-setting decision, our lawyers persuaded the court to limit the direct liability of an anonymous registration service provider for violations of the ACPA and thus restrict the claims against our client.

Comprehensive Legal Agreements

Your website have contracts posted that govern how your website is to be used, govern transactions and sales through your website, and address how personal information submitted to your website will be managed and protected. At a minimum, these contracts should consist of an online privacy policy and Terms of Use (also known as “Terms and Conditions” or “Terms of Service”).

A privacy policy is legally required for all e-commerce websites and e-commerce mobile applications, and your website’s privacy policy will notify your visitors about how you are going to collect, use, disclose, share, and store their personal information (including financial information). The topics covered by your website’s privacy policy will depend on the types of personal information you collect from your visitors, the legal and regulatory requirements that apply to your business, and your ability to adhere to the terms of your policy in practice.

Your website’s Terms of Use, on the other hand, is a binding contract that lays the rules for how your website may or may not be used, and will typically provide a framework of legal terms for any transactions conducted through your website. For this reason, it is imperative that online businesses adopt written terms that are pertinent to their business. Businesses that neglect to transcribe their business transactions into their Terms of Use, or that copy existing agreements without any modification, open themselves up to liability from insufficient agreements or a lack of understanding of the terms that they have adopted.

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