October 14, 2009 4:15 PM
Winston Helps Raptors Star Bosh Become Internet Hero
Posted by Zach Lowe
Luis Zavala didn't count on Toronto Raptors star forward Chris Bosh when he started snapping up hundreds of domain names consisting of an athlete's or celebrity's name followed by dot-com. Zavala, something of a legend in the cyber-squatting world, likely believed that most athletes are either too busy to fight for a domain name or so rich they wouldn't mind paying a couple of thousand dollars to grab the name without a fight.
But Chris Bosh (pictured right) has long been an Internet innovator. He had his own channel on YouTube by 2007. He is among the National Basketball Association's most passionate Tweeters--he even won a contest over the summer with another NBA player to see who could accumulate 50,000 Twitter followers first. But Bosh's Web presence was limited by the fact that someone had already taken ChrisBosh.com. Bosh was using Chris-Bosh.com instead. So he decided to fight.
Bosh hired his regular outside counsel at Winston & Strawn to track down the cyber-squatter and get him to turn over the domain name. The firm has represented Bosh on several media ventures, says Brian Heidelberger, the lead Winston partner on the cyber-squatting matter. Henry Thomas, Bosh's agent at Creative Artists Agency, had a prior relationship with Winston and initially introduced Bosh to the firm, Heidelberger says. (Thomas did not return a call seeking comment.)
Heidelberger traced the owner of ChrisBosh.com and found it was Zavala, a resident of Los Angeles who also was squatting on about 800 other domain names linked to athletes, celebrities, and even convicted and reputed mob bosses, including John Gotti and one of Gotti's relatives, court records show. Heidelberger contacted an unspecified number of other players to see if they wanted to pursue a claim against Zavala. Only Bosh did. "There are many players who don't want to pay [the squatter] or file a complaint, and so they are left without their real names to use on their Web sites," Heidelberger says. "Chris decided to put his foot down and do something about it."
Heidelberger contacted Zavala demanding he return the domain name to Bosh. In an e-mail, Zavala replied that, "I have no intentions of handing over my domain and I'm not in the business of giving domains away," Heidelberger says, quoting court records.
So Bosh sued in federal trial court in Los Angeles. And Zavala never showed up to answer the complaint or defend himself. So Judge Florence-Marie Cooper decided the case for Bosh and signed a court order demanding Zavala turn over the Bosh.com domain name. Judge Cooper also demanded that Zavala pay $120,000 in damages.
The Winston & Strawn team knew it would be difficult to collect that money, so they asked Cooper to levy the other 800 domain names Zavala owned to cover a portion of those damages. She agreed to do so Wedneday. Zavala now has to turn over all the domain names to Bosh via VeriSign, the California-based company that essentially oversees dot-com Web addresses, Heidelberg says. Bosh then will turn the names over to athletes and celebs free of charge.
Heidelberger, an IP lawyer who specializes in marketing and e-commerce, says he can't remember another cyber-squatting case in which a judge levied third-party domain names as part of a ruling. He says most such cases are settled out of court--particularly if the plaintiffs are rich--and those that do make it to the litigation stage seldom get as far as Bosh's case did before a settlement. Some never reach court at all; instead, the parties choose to submit briefs to the World Intellectual Property Organization (WIPO), which can determine ownership of domain names but cannot levy fines, Heidelberger says.
Heidelberger could not say how many hours his firm billed on the matter or how much it ended up costing Bosh. "It was not a huge commitment, and we tried to make it as economical as possible," he says.
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