Cybersquatter Forced to Relinquish Internet Domain Name

Syosset, New York

Hoffmann & Baron, LLP has successfully enforced the federally registered Service Mark COMPACT DISC WORLD^®against cybersquatting of the cdworld.com domain name before the National Arbitration Forum (the “NAF”) without resort to the federal courts.

Compact Disc World, Inc., a recognized retail music chain located throughout New Jersey, has enforced its Service Mark against Artistic Visions, Inc. by obtaining a decision under ICANN’s Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) to prevent Artistic from transferring or continuing to use its cdworld.com domain name on the World Wide Web. In a related matter, Compact Disc World successfully opposed Artistic Visions’ attempted registration of the “CDworld” trademark in the United States Patent and Trademark Office (the “USPTO”).

Alan M. Sack, partner at Hoffmann & Baron, LLP, represented Compact Disc World before the NAF and in the related USPTO opposition. The NAF is one of the world’s largest neutral and online alternative dispute resolution organizations. NAF arbitrators are experienced attorneys or retired judges and normally require strict adherence to procedural requirements. Cases heard by the NAF are usually handled more quickly and at a much lower cost than those heard in court. An NAF arbitration panel consists of either one or three arbitrators, at the parties’ discretion.

In this arbitration, both parties presented their arguments and evidence to a single independent arbitrator who, in turn, decided the case in favor of Compact Disc World, Inc., within 45 days from the start of arbitration.

The arbitrator’s decision required Network Solutions, Inc., which oversees and maintains control over domain names, to transfer Artistic’scdworld.com domain name to Compact Disc World. The decision is based on this cdworld.com domain name being confusingly similar to the federally registered COMPACT DISC WORLD^® Service Mark. The NAF found that Artistic has “no right or legitimate interests” in cdworld.com and that it used this domain name “in bad faith.” ¹ The finding of bad faith was based in part on Compact Disc World’s vigilance in providing Artistic with written notice of its federally registered trademark rights, long before Artistic had invested substantially in the cdworld.com domain name.  To compound the problem, Artistic failed to obtain the opinion of Counsel clearing the name. In addition, Artistic offered to sell the domain name to Compact Disc World for $70,000, a sure sign of cybersquatting.

Currently Compact Disc World, Inc. operates its clubcd.com website and also has a link pointing to its website from the compactdiscworld.comaddress.  It has completed the administrative requirements for implementing the NAF’s decision with Network Solutions, and will soon link the cdworld.com address to its website.

¹ National Arbitration Forum, Decision, Compact Disc World, Inc. v. Artistic Visions, Inc., Claim Number: FA0107000097855, page 4.