Practice Areas & Industries: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

Practice/Industry Group Overview

Domain Name Litigation and UDRPs
We have developed an international reputation as a leading expert in the field of domain names. We have handled more than 70 civil litigations in the U.S. involving domain names, spanning industries such as food and beverages, hospitality, computer and electronics, and media and entertainment.

Services Available

Our lawyers handle hundreds of domain name disputes each year and have filed or defended more than 400 complaints under ICANN’s Uniform Dispute Resolution Policy for more than 100 different clients. We have addressed a wide variety of factual scenarios and issues with these complaints. 

Finnegan’s experience stretches well beyond the U.S. We have coordinated or assisted with litigation involving generic top-level domains and country-code top-level domains in many foreign countries, including Argentina, Australia, Brazil, Chile, Denmark, Germany, Greece, India, Israel, Mexico, the Netherlands, Portugal, and Uruguay. Favorable decisions have been issued in all cases decided to date, including what are believed to be the first such decisions in India and Israel.

Because of the pervasive nature and extent of cybersquatting and infringement activity on the Internet, we have advised clients on developing domain name registration strategies to help avoid or minimize more costly enforcement work down the road. We also help clients manage and set priorities for enforcement efforts by developing specific guidelines and strategies.

Our domain name and Internet expertise derives not only from our extensive practical experience in handling such matters, but also from writing and speaking on these topics. Finnegan attorneys author articles on trademark issues arising from the Internet, including fair use, linking, metatagging, and the Anticybersquatting Consumer Protection Act, and we also review and summarize all significant Internet-related trademark decisions from U.S. courts and post the summaries on our Web site.

Representative Engagements

Fast relief for Yahoo!
When Yahoo!’s famous YAHOO! trademark was misused on the Internet, the company turned to Finnegan. We obtained a temporary restraining order for Yahoo!, enjoining the defendants from using the domain name 21yahoo.com for a website offering free stock in 21Yahoo.com, Inc. In a separate matter, we obtained an ex parte temporary restraining order for Yahoo! against typosquatters who registered the domain name yaholigans.com (a typo of the name of Yahoo!’s children’s site, YAHOOLIGANS!), among others, and used them for an adult-entertainment site.

Keeping Disney’s name secure on the internet
Finnegan successfully prosecuted an in rem action under the ACPA on behalf of Disney against 35 domain names owned by 24 different registrants, obtaining consent judgments from 22 of the domain name defendants and default judgments against the remaining defendants.

Protecting a legendary newspaper’s brand on the internet
Finnegan obtained an ex parte temporary restraining order for The Washington Post against typosquatters who registered the domain name washintonpost.com and used it for an adult-entertainment website.