EBG Among First in the Country to Use Successfully New Law Protecting Trademarks on the Internet

In a recent edition of E-Health Law Perspectives, we introduced you to the Anticybersquatting Consumer Protection Act of 1999. As a follow-up, we report that attorneys at Epstein Becker & Green have been among the first in the nation to use it to protect their clients' intellectual property and trademark rights in the emerging world of internet business.

First, Petersen Publishing Company, L.L.C, a client of Epstein Becker & Green, became one of the first trademark owners in the country to use successfully the Anticybersquatting Consumer Protection Act that the President signed into law on November 29, 1999. Attorneys at Epstein Becker & Green secured a temporary restraining order from the United States District Court for the District of New Jersey on January 6, 2000 for Petersen, publisher of Teen Magazine, that (1) prevented a web site domain name registrant and internet service provider from using "teenmagazine.com" or any confusingly similar domain name as a portal to a variety of sexually explicit web sites and (2) ordered the immediate transfer of the domain name registration to Petersen. On January 14, the Court agreed to enter a preliminary injunction leaving the restraints in place for the duration of the litigation. The firm's New Jersey and Los Angeles offices collaborated to achieve this result in Petersen Publishing Company, L.L.C. v. Blue Gravity Communications, Inc., as widely reported in business and media circles.

Then, in an action filed on behalf of Caswell-Massey Co., Ltd., a manufacturer and seller of high end lotions, soaps and toiletries, Epstein Becker & Green attorneys from the New Jersey and Washington, D.C. offices collaborated to wrest from a repeat cybersquatter the domain name registration "caswellmassey.com," which was one of the several domain names that had been registered to Fashion News of Rockville, Maryland. EB&G filed an action in the United States District Court for the District of Maryland under the cybersquatting law on February 10, 2000. Less than a week later, the Court entered an order transferring to Caswell-Massey Co. ownership and control over the domain name at issue.

These cases are important because they illustrate that courts, when presented with the appropriate arguments, will use even relatively new laws to protect intellectual property rights. As traditional trademark owners become more and more likely to register domain names identical or close to their trademarks, or want to stop others from trading on-line on the owner's existing goodwill, use of the anti-cybersquatting law will only increase.