Cybersquatting – internetcases – Attorney Evan Brown

April 7, 2026 Cybersquatting, Trademarks

No restraining order in domain name dispute involving Robinhood founder

domain name dispute

A federal court in California has denied emergency relief in a cybersquatting case involving Vlad Tenev, the co-founder of Robinhood, the popular investment platform. The United States District Court for the Northern District of California declined to issue a temporary restraining order over the domain name vladtenev.com, but ordered the defendants to show cause why a preliminary injunction should not be entered.

Background of the dispute

Plaintiffs Robinhood Markets, Inc. and Vladimir Tenev brought suit against Libin Zhu and Dynadot Inc. after Zhu registered the domain name vladtenev.com and allegedly offered it for sale for $16,800. Plaintiffs asserted claims under the Lanham Act and the Anti-Cybersquatting Consumer Protection Act, along with unfair competition, common law trademark infringement, and violation of California’s right of publicity statute.

Before turning to federal court, Tenev pursued a Uniform Domain Name Dispute Resolution Policy proceeding. That effort was unsuccessful. The UDRP panel denied his claim in February 2026, a fact that influenced the court’s view of the timing of this lawsuit.

Requested relief

Plaintiffs asked the court to enter an ex parte temporary restraining order blocking the alleged cybersquatting conduct, requiring transfer of the disputed domain name, and prohibiting defendants from using or marketing the “VLAD TENEV” name or confusingly similar identifiers. They also sought an order to show cause regarding a preliminary injunction.

The court’s ruling

The court denied the request for a temporary restraining order. At the same time, it granted the request for an order to show cause and set a briefing schedule and hearing on whether a preliminary injunction should issue.

Key reasoning

The court found that plaintiffs had not shown a likelihood of success on their Lanham Act or ACPA claims. Personal names are treated as descriptive under trademark law and are protectable only if they acquire secondary meaning. That requires showing that the public primarily associates the name with a product or service rather than the individual. Here, the court found it implausible that “Vlad Tenev” functions primarily as a source identifier for public speaking services, rather than identifying Tenev himself, particularly given his prominence as a co-founder of Robinhood.

The court did conclude that plaintiffs raised serious questions under California Civil Code section 3344, which governs the right of publicity. But that alone was not enough to justify ex parte relief.

The court also emphasized delay. Plaintiffs were aware of the domain listing in early January 2026, pursued and lost the UDRP proceeding in February, and then waited more than a month after that adverse decision to seek a TRO. That delay undermined any claim of immediate and irreparable harm, which is required for emergency relief.

Takeaways

The decision underscores how difficult it can be to assert trademark rights in a personal name without strong evidence of secondary meaning, even for a well-known figure such as the co-founder of Robinhood. It also highlights a practical point about timing. Pursuing a UDRP proceeding does not eliminate the need to act quickly in court if emergency relief is sought.

Robinhood Markets, Inc. v. Zhu, 2026 WL 915291 (N.D. Cal. Apr. 3, 2026)

March 26, 2026 Cybersquatting, Trademarks

Oklahoma federal court keeps Paycom trademark, cybersquatting suit

domain name law

The United States District Court for the Western District of Oklahoma refused to dismiss Paycom trademark and cybersquatting suit against Pay.com entities, finding that the case could proceed in Oklahoma. Plaintiff sued defendants for trademark infringement, false designation of origin, trademark dilution, cybersquatting, common-law trademark infringement, unfair competition, and violation of the Oklahoma Deceptive Trade Practices Act. Plaintiff alleged that defendants used Pay.com and Paycom-related branding in a way that confused consumers, suggested an affiliation with plaintiff, and harmed plaintiff’s PAYCOM marks.

Dismissal request

Defendants asked the court to dismiss the case for lack of personal jurisdiction and also asked it to dismiss the cybersquatting claim for failure to state a claim. They argued that their online activity did not create sufficient Oklahoma contacts and that plaintiff had not adequately pleaded the elements of an Anti-Cybersquatting Protection Act (ACPA) claim.

Jurisdiction ruling

The court ruled that dismissal was not warranted. It held that plaintiff made a prima facie showing of specific personal jurisdiction in Oklahoma and also held that the amended complaint plausibly stated a cybersquatting claim, so defendants’ motion to dismiss was denied in full.

Why the court rejected dismissal

The court found that defendants had sent follow-up marketing emails directly to prospective Oklahoma merchants after those businesses began account applications through the pay.com website, and those contacts were enough to show purposeful direction toward Oklahoma that related to plaintiff’s alleged injuries. The court also found that defendants had not shown jurisdiction in Oklahoma would be unreasonable, and it concluded that the cybersquatting arguments turned on factual disputes and matters outside the pleadings that could not be resolved on a Rule 12(b)(6) motion.

Paycom Payroll, LLC v. Pay.com US, Inc., 2026 WL 810559 (W.D. Oklahoma, March 24, 2026)

December 22, 2024 Cybersquatting, Trademarks

Cybersquatting claim failed where there was a weak mark and no evidence of bad faith intent

acpa

Aspire Health Partners sued Aspire MGT under the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d) (“ACPA”) over defendant’s registration and use of the domain name <aspirehealthgrp.com>. Plaintiff sought a preliminary injunction to stop defendant from using the disputed domain name, but the court denied the request. The court held that plaintiff failed to show that defendant acted with a bad-faith intent to profit from the use of the domain name, a key element of a cybersquatting claim under the ACPA.

To prevail on a cybersquatting claim under the ACPA, a plaintiff must demonstrate that (1) its trademark in the disputed domain name was distinctive when the domain name was registered, (2) the disputed domain name is identical or confusingly similar to that trademark, and (3) the defendant registered the disputed domain name with a bad-faith intent to profit. In this case, the court found plaintiff would not likely succeed on its cybersquatting claim because of deficiencies under the first and third element.

The court found that plaintiff’s mark was not distinctive but instead was descriptive as a “self-laudatory” type of mark. Citing to the well-known McCarthy treatise on trademark law, the court determined that the word “aspire” when applied to healthcare services was of the same sort of use as the word “best” or “super” that extolls some feature or attribute of services and thereby becomes descriptive in nature and likely too weak to be subject to trademark protection.

As for the lack of bad faith, the court found that plaintiff had only made a conclusory allegation on the topic. Looking at various factors that courts apply to determine bad faith under the ACPA, the court noted in particular, among other things, that defendant had used the domain name in connection with a bona fide offering of its goods and services, and had not been shown to possess any intent to divert customers form plaintiff’s website or any intent to transfer or sell the domain name for financial gain.

Three Reasons Why This Case Matters:

Legitimacy in Business Use: Using a domain name for legitimate business purposes can protect defendants against cybersquatting claims.
Trademark Strength: Descriptive trademarks often face greater challenges in cybersquatting cases without strong evidence of distinctiveness.
Evidence of Intent: Courts require clear proof of bad-faith intent to profit, not just similarity between domain names, to uphold a cybersquatting claim.

Aspire Health Partners, Inc. v. Aspire MGT LLC, 2024 WL 5169936 (M.D. Fla., Dec. 19, 2024)

April 15, 2024 Cybersquatting

Does renewing a domain name count as “registering” a domain name under the ACPA?

ACPA

The Anticybersquatting Consumer Protection Act (“ACPA”) is a federal law – part of the Lanham Act that deals with trademarks and unfair competition. It says that a person can be liable if he or she registers a domain name that contains another’s distinctive trademark with a bad faith intent to profit from that mark.

One issue that has arisen over the years is whether registration that can give rise to liability means only the first time the domain name is registered, or whether it applies to the re-registration, e.g., each year when the registration is up for renewal with the registrar. See this case from earlier this year where the court held that renewal was not registration.

The various federal circuits are split over the issue. At least the the Third, Fourth, and Eleventh Circuits have all concluded that the ordinary meaning of the word “registers” necessarily includes both the first registration and any subsequent re-registrations. The Ninth Circuit has held that Congress meant “registration” to refer only to the initial registration.

The Second Circuit does not appear to have weighed in on the question. But a recent district court sitting in the Second Circuit sided with the “re-registration is registration” take from the Third, Fourth and Eleventh Circuits.

In the case of We the Protesters, Inc. v. Sinyangwe, 2024 WL 1195417 (S.D.N.Y., March 20, 2024), counter-defendant registered the disputed domain name in 2015. The issue was whether the re-registration of the disputed domain name in 2023 was a registration of a distinctive mark done in bad faith. This passage of time was important because it gave the arguably descriptive mark MAPPING POLICE VIOLENCE enough time to become distinctive.

Concerning the word “registers” in the ACPA, the court applied its ordinary meaning, noting that it was not the province of the court to add words to statutes that Congress enacts. “Had Congress wished to restrict the word ‘registration’ as used in the ACPA to initial registrations, it surely knew how to do so.”

We the Protesters, Inc. v. Sinyangwe, 2024 WL 1195417 (S.D.N.Y., March 20, 2024)

See also:

April 8, 2024 Cybersquatting, Trademarks

Sprint puts an end to entrepreneurs’ efforts to revive NEXTEL brand

abandonment — This house is abandoned but the NEXTEL mark is not.

Plaintiff Sprint (owner of the NEXTEL brand) sued defendant business owners, asserting claims for trademark infringement, cybersquatting and counterfeiting. Beginning in 2016, defendants – apparently believing that Sprint had abandoned the NEXTEL mark – began selling cheap cell phones branded as Nextel devices, and operating websites lauding the brand’s “revival”.

The question of defendants’ liability for infringement of the NEXTEL word mark went to a jury, which found in favor of plaintiff. The jury rejected defendants’ argument that Sprint had abandoned the NEXTEL mark.

Defendants sought review of the jury’s finding of no abandonment with the Eleventh Circuit Court of Appeals. On appeal, the court affirmed the lower court’s judgment.

The court examined how abandonment is a defense in trademark infringement cases, requiring discontinuation of a mark’s use with no intent to resume. Trademarks must be used genuinely, and the Lanham Act provides that three years of nonuse is prima facie evidence of abandonment.

The court concluded that the evidence showed Sprint’s continuous use of the NEXTEL word mark. For the three year period that defendants claimed Sprint had not used the mark, Sprint had provided evidence that the mark was used on at least two products. This continuous use also undermined defendants’ arguments against the cybersquatting claim.

Sprint Communications, Inc. v. Calabrese, 2024 WL 1463416 (11th Cir., April 4, 2024)

April 2, 2024 Cybersquatting, Trademarks, Unfair Competition

Redirecting URL was unlawful but did not cause damages

url redirect trademark

In the months leading up to the FDA shutting down plaintiff’s business, one of the co-owners of the business left and set up a competing enterprise. For a few weeks, the former co-owner set plaintiff’s domain name to forward to the new company’s website.

Plaintiff sued and the court held that redirecting the URL was a violation of the Lanham Act (the federal law relating to trademarks and unfair competition). But plaintiff was not entitled to any damages because it failed to show that the redirection caused any lost sales. During that time, 133 users who tried to access plaintiff’s website were redirected to the new company’s website, and of those 133 visitors, only two submitted inquiries and neither customer who submitted an inquiry placed an order.

ABH Nature’s Products, Inc. v. Supplement Manufacturing Partner, Inc., 2024 WL 13452228 (E.D.N.Y., March 29, 2024)

Can the owner of a company be personally liable for what the company does?

personally liable

One of the major benefits of forming a corporation or limited liability company is the shield from personal liability the business entity provides to its owners. But that shield does not protect against all of the company’s officers’ conduct.

In a recent trademark infringement case in federal court in California, a court evaluated whether a company’s officer could face liability for trademark infringement and cybersquatting. Plaintiff sued the company and the owner individually, asserting that that the owner should be personally liable because he controlled and was involved in all significant corporate decisions regarding the alleged infringement.

Citing to Facebook, Inc. v. Power Ventures, Inc., 844 F.3d 1058 (9th Cir. 2016), the court observed that a corporate officer can be personally liable when he or she is the “guiding spirit” behind the wrongful conduct, or the “central figure” in the challenged corporate activity.

In this case, the court declined to dismiss the individual defendant from the lawsuit. With respect to the alleged trademark infringement and cybersquatting, the court focused on the fact that the individual defendant:

was the founder and central figure of the company,
personally participated in all major business strategy, branding and marketing decisions and actions,
ran the company from his home,
was the only officer of the company and was simultaneously the CEO, CFO and Secretary,
promoted the company’s brand from his personal social media account, and
directly negotiated with the plaintiff’s founder to see whether the parties could “find a more peaceful resolution.”

Simply stated, the individual defendant was not merely a board member that “final say,” but was substantially involved in every aspect of the conduct of the business giving rise to the alleged intellectual property infringement.

Playground AI LLC v. Mighty Computing, Inc. et al., 2024 WL 1123214 (N.D. Cal., March 14, 2024)

See also:

January 10, 2024 Cybersquatting, Trademarks

No ACPA injunction because mark was not distinctive when domain name first registered

ACPA

This case had a bit of a weird result – even though the brand owner had a mark that was 20 years old, and the alleged cybersquatter in the meantime acquired a domain name on the open market identical to that mark, because the domain name was first registered (by an unrelated party) before the brand owner’s trademark rights arose, there was no relief under federal trademark law. One may question whether such a result creates a loophole for bad faith actors.

History of registration and rights

Someone – no one seems to know who – first registered the disputed domain name <trx.com> back in 1999. In 2003, plaintiff’s successor in interest (via bankruptcy) began using the trademark TRX, thereby acquiring rights in the mark. Defendant bought the domain name in 2022.

Plaintiff sued defendant under the Anticybersquatting Consumer Protection Act (ACPA), a part of U.S. trademark law that deals with bad faith domain name registration. Plaintiff sought a preliminary injunction ordering the transfer of the disputed domain name pending resolution of the lawsuit. The court denied the motion because it found that plaintiff had not established that plaintiff would likely succeed on the merits of the cybersquatting claim.

Outcome up for critique

The legal holding is potentially problematic, however, and represents a point on which different federal courts sitting in different parts of the country handle cybersquatting claims differently under the ACPA.

In this case, the court held that plaintiff’s cybersquatting claim depended on when the disputed domain name was first registered. Citing to a 2023 case from the same district, Blair v. Automobili Lamborghini SpA, which in turn relied on the Ninth Circuit’s opinion in GoPets Ltd. v. Hise, 657 F.3d 1024 (9th Cir. 2011), the court explained that liability for cybersquatting is possible “only when a person other than the trademark owner registers a domain name that is confusingly similar to a trademark that is distinctive at the time of the domain name’s registration.” It went on to note that “[i]n other words, if a domain name is registered before a particular trademark exists, the trademark owner cannot assert a viable cybersquatting claim against the domain name owner.”

So under this logic, because the domain name was registered prior to 2003 (when the rights in the TRX mark came into existence), there is no way plaintiff’s TRX mark could have been distinctive at the time of the domain name’s registration. The court came to this conclusion even though the record demonstrated that some unknown person, other than defendant, first registered the disputed domain name, and that defendant first acquired the domain name on the market many years after the TRX mark had become distinctive.

It is interesting to note that this outcome conflicts with decisions in other circuits that hold “re-registration” by a new owner counts as the time for evaluating whether a mark with which a domain name may be confusingly similar, is distinctive. See, e.g., Instructure, Inc. v. Canvas Technologies, Inc., 2022 WL 43829 (D. Utah, January 5, 2022). One could argue it is bad policy for the ACPA system to essentially absolve a bad faith actor who acquires a domain name that contains a protectible mark but was first registered by someone else not acting in bad faith, prior to the time the mark became strong.

JFXD TRX ACQ LLC, v. trx.com, 2024 WL 98424 (D. Ariz., January 9, 2023)

See also:

February 2, 2022 Cybersquatting

Strip club operator wins motion in domain name dispute against GoDaddy company

NameFind is a GoDaddy company that holds registrations of domain names and seeks to make money off of them by placing pay-per-click ads on parked pages found at the domain names. Global Licensing owns the DEJA VU trademark that is used in connection with strip clubs and other adult-related services. When NameFind used the domain name dejavushowgirls.com to set up a page of pay-per-click ads, Global Licensing sued, raising claims under the federal Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125(d).

cybersquatting domain name dispute

Arguing that the cybersquatting claim had been insufficiently pled, NameFind moved to dismiss. The court denied the motion.

To establish a “cybersquatting” claim under the ACPA, a plaintiff must establish that: (1) it has a valid trademark entitled to protection; (2) its mark is distinctive or famous; (3) the defendant’s domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, plaintiff’s mark; and (4) defendant used, registered, or trafficked in the domain name (5) with a bad faith intent to profit. DaimlerChrysler v. The Net Inc., 388 F.3d 201 (6th Cir. 2004) (citing Ford Motor Co. v. Catalanotte, 342 F.3d 543, 546 (6th Cir. 2003)).

Identical or confusingly similar

NameFind first argued that the court should dismiss the ACPA claim because there were no “non-conclusory” allegations explaining how the content on its website could be confusingly similar to plaintiff’s entertainment services. The court found this argument unpersuasive, however, because the content of the website was not important in evaluating this element. Instead, the court was to make a direct comparison between the protected mark and the domain name itself, rather than an assessment of the context in which each is used or the content of the offending website. It found the disputed domain name and plaintiff’s mark to be identical or confusingly similar because the disputed domain name incorporated plaintiff’s mark, and there were no words or letters added to plaintiff’s mark that clearly distinguished it from plaintiff’s usage.

Bad faith intent to profit

The court likewise rejected NameFind’s second argument, which was that plaintiff had not sufficiently pled NameFind’s bad faith intent to profit. The main point of the argument was that most of plaintiff’s allegations were made “on information and belief”. (That phrase is used in lawsuits when the plaintiff does not know for sure whether a fact is true, so it hedges a bit.) The court observed that allegations made on information and belief are not per se insufficient.

In this case, the court stated that the “on information and belief” allegations should not be considered in isolation, but should be considered in the context of the entire Complaint, including the factual allegations that: (1) NameFind had no intellectual property rights in or to the DEJA VU mark; (2) the disputed domain name was essentially identical to plaintiff’s mark and did not contain defendant’s legal name; (3) plaintiff did not authorize or consent to such use; (4) the domain name was configured to display pay-per-click advertisements to visitors, which provided links to adult-related entertainment sites; (5) as such, the disputed domain name was likely to be confused with plaintiff’s legitimate online location and other domain names, and deceive the public; and, (6) defendant’s website harmed plaintiff’s reputation and the goodwill associated with its marks by causing customers to associate plaintiff with the negative qualities of defendant’s website.

Global Licensing, Inc. v. NameFind LLC, 2022 WL 274104 (E.D. Michigan, January 28, 2022)

January 11, 2022 Cybersquatting

ACPA claim survives because mark was distinctive when domain name was re-registered

ACPA distinctive re-regiistered

Federal law has a statute that prohibits abusive domain name registration. The Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d) (ACPA) provides, among other things, that one is prohibited from registering, trafficking in or using, with a bad faith intent to profit, a domain name that is confusingly similar to another’s trademark that was distinctive when the domain name was registered.

In the recent case of Instructure, Inc. v. Canvas Technologies, the court considered whether the ACPA requires the mark to have been distinctive when the domain name was first registered, or whether it can still be protected by being distinctive when the domain name was re-registered. It held that the statute applies to distinctiveness at re-registration.

In this case, the disputed domain name was first registered in 1997, several years before plaintiff obtained trademark rights in its CANVAS mark. Defendant moved to dismiss plaintiff’s cybersquatting claim, arguing that the plaintiff did not have rights to a distinctive mark when the domain name was first registered, and that therefore the statute’s requirement was not met. Plaintiff showed, however, that the ownership of the domain name changed sometime in 2021 (i.e., it was re-registered).

Looking to the statute’s plain language, Congressional intent, public policy, and the trending weight of authority in other federal circuits, the court held that re-registration, or “registration again” is contemplated under the ACPA’s language. It denied defendant’s motion to dismiss the ACPA claim.

Instructure, Inc. v. Canvas Technologies, Inc., 2022 WL 43829 (D.Utah, January 5, 2022)