Domain Names and Cyber Protection

Venable is often called upon to provide counsel on brand-management issues, including enforcement of brand names within domain names, social media, adwords/keywords, phishing, false blogging, and other online brand identity theft, such as the sale of counterfeit goods in online auctions and the use of brand names in virtual-reality worlds. Our attorneys are well versed in the latest cyber trends that can pose a threat to your brands.

Prevention begins with a system for monitoring the misuse of your brand in cyberspace. We can help you determine best practices for selecting and enforcing domain names, managing and updating domain-name policies, working with domain-name management services, and dealing with search engines.

Venable attorneys have recovered hundreds of domain names around the world through inter partes proceedings. We have resolved domain-name disputes under the Internet Corporation for Assigned Names and Numbers’ (ICANN) Uniform Domain Dispute Resolution Policy and in lawsuits under the federal Anticybersquatting Consumer Protection Act. In other cases, we have utilized demand letters and negotiations to achieve our clients’ goals. Venable also works closely with our legislative advisors on initiatives to combat Internet brand problems, such as the online sale of counterfeits.

Copyright Focus

  • Copyright registration
  • Licensing and purchase/sale of copyrighted material
  • Litigating copyright disputes
  • Reproduction rights
  • Resolving infringement issues
  • Resolving ownership disputes
  • Searching copyright records to determine ownership and protectability
  • Work-for-hire agreements, assignments and releases

Trademark Focus

  • Clearance counseling
  • Customs recordations
  • Infringement issues
  • Licensing
  • Litigation, U.S. and worldwide
  • Technology transfers and corporate transactions
  • Trademark prosecution, U.S. and worldwide

Internet Focus

  • Cybersquatting
  • Domain name best practices
  • False search-engine placement
  • ICANN policies
  • Internet auctions of counterfeits
  • Keyword issues
  • Litigation
  • Online threats to brands
  • Recouping misappropriated names
  • Typosquatting

Experience
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  • Venable attorneys advise numerous firm clients with respect to how best to prevent use of their key brands in the .xxx adult registry, which launched in September 2011
  • Venable provides complex guidance to numerous clients in various industries on the implications of the roll out of unlimited applications for new top-level domains (gTLDs), and assisted several clients in applying for gTLDs
  • Venable defended a gTLD applicant from a federal lawsuit that would have enjoined its gTLD application, fending off a temporary restraining order and preliminary injunction
  • Venable advises clients on evolving internationalized domain names. In 2010, the firm helped a client register one of the first all-Cyrillic domains
  • Venable successfully recovered a domain name on behalf of a famous resort town in Switzerland in the Eastern District of Virginia
  • Venable stopped a sham technology outsourcing company from using our client’s well-known Internet hosting brand on Facebook to attract would-be victims to its business and websites

Recognition
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  • Named technology law firm of the year by U.S. News – Best Lawyers "Best Law Firms," 2017
  • Top 20 U.S. trademark filer
    World Trademark Review, 2012
  • Top 10 in obtaining U.S. trademark registrations
    Intellectual Property Today, 2012