Debevoise Secures Pro Bono Trademark Win for the Shinnecock Indian Nation

10 March 2023

Debevoise & Plimpton LLP has secured a pro bono victory on behalf of the Shinnecock Indian Nation, a Native American tribe from Long Island, in the transfer of the domain name <> from a cyber squatter named Jose Benjamin Gio Yah, back to the tribe. Mr. Yah had created the website to host illicit content and maliciously tarnish the brand of the tribe. This illegal practice known as “cybersquatting” is the unauthorized use of an internet domain name that is similar or identical to the trademark of another party. The case was resolved by a single member arbitration panel in accordance with the “Uniform Domain Name Dispute Resolution Policy” (UDRP) which governs disputes regarding all domain names on the internet.

The Shinnecock Indian Nation hosts the annual Shinnecock Indian Powwow, one of the largest Native American events on the East Coast, and which been held for 76 years. The prominent event includes competitive dancing, guest entertainment, prayers, ceremonial dances, and vendors selling Native American wares. In an attempt to trade off the fame and success of this event, Mr. Yah illicitly took ownership of the domain name. Although he claimed to provide information on the website about the tribe, he in fact hosted irrelevant information on Asian Indians and linked to inappropriate websites, which threatened the family-friendly reputation of the Powwow and the tribe by unfairly associating the tribe with negative content.

In order to prevent this abuse of its trademark, Debevoise successfully secured an arbitration judgement from a single member UDRP panel which returned the domain name back to the Shinnecock Indian Nation.

The Debevoise team was led by IP litigation partner David Bernstein, and included associates Roy Sengupta and Kendra Berry, as well as summer associate John (“Jack”) Hollingsworth.