Cybersquatting: don’t press your luck with Verizon

Cybersquatting cases often present astonishing scenarios, and a recent ruling in the District of Columbia serves as a prime example. In the year 2023, an individual known as Mr. McMan anonymously registered multiple domain names that either incorporated or mimicked the renowned “VERIZON” brand. In keeping with established corporate protocol, the telecommunications giant promptly sent Mr. McMan formal cease-and-desist letters. However, the unexpected twist came when Mr. McMan not only continued to register additional domain names (as detailed in Table 1) but also adopted the commercial name “Verizon Trademark Services LLC,” identical to one of Verizon’s subsidiaries.

(Table 1)

This audacious move prompted Verizon to deviate from its customary extrajudicial actions (as depicted in Table 2) and take the matter to court.

(Table 2)

The significance of the ensuing legal proceedings lies primarily in two aspects. Firstly, they empower the state judge to unmask the cyber-squatter, a power not available to third-party decision-makers in extrajudicial procedures. Secondly, these proceedings open the door to monetary compensation, an option not accessible in extrajudicial resolutions.

On September 20, 2023, Verizon initiated a lawsuit against Mr. McMan for cybersquatting, invoking the 15 U.S.C. § 1125(d) (Anti-Cybersquatting Consumer Protection Act or “ACPA”), trademark infringement based on 15 U.S.C. § 1114(1) (Lanham Act), and false designation of origin under 15 U.S.C. § 1125(a)(1)(A) (Lanham Act).

Verizon sought an injunction from the judge to prevent the defendant from using the “VERIZON” trademark. As expected, the injunction was granted in its broadest scope.

In terms of compensation, the law permitted Verizon to request between $1,000 and $100,000 per domain name under article §1117. Since the defendant’s domain names were parked, Verizon opted to seek $50,000 per domain name, a request that was granted as well (which makes a total of USD450,000).

This case serves as a stark reminder of the importance of monitoring new domain name registrations that may potentially infringe upon established trademarks, using appropriate detection methods.

Source: United States Court for the District of Columbia, Verizon Trademark Services LLC c. Verizon Trademark Services LLC, Case No. 23-CV-2750 (JMC) [pdf].