Zak Muscovitch has practiced domain name and trademark law since 1999 for clients all over the world. Having acted as counsel on behalf of both complainants and respondents in over 100 contested UDRP, CDRP and other national domain dispute mechanisms, Zak has acquired a unique understanding and appreciation of domain name dispute law and practice. In addition to domain name arbitration work, Zak has acted as counsel in several precedent-setting domain name dispute court cases in Ontario Superior Court and in the Federal Court of Canada.
In his private practice, Zak frequently acts in non-contentious IP and transactional matters, including trademark prosecution and licensing, acquisition and sale of online businesses, and corporate commercial contracting in the fields of finance, advertising and marketing, telecommunications, real estate, software development, and e-commerce.
Zak is active in Internet governance issues through his work at ICANN, including in the Rights Protection Mechanisms Working Group and the Transfer Policy Working Group.
Counsel in Toronto.com v. Sinclair (c.o.b. Friendship Enterprises) (2000), 6 C.P.R. (4th) 487 (Fed. Ct.); successfully defended against the first attempt in Federal Court to obtain an interlocutory injunction against a domain name registrant.
Counsel in Easthaven, Ltd. v. Nutrisystem.com Inc. (2001), 55 O.R. (3d) 334, 202 D.L.R. (4th) 560, 14 C.P.R. (4th) 22 (Ont. Sup. Ct.), the first decision to establish the convenient forum for international domain name disputes involving a Canadian domain name registrar.
Instructing counsel for the registrant of the defendant domain name in Heathmount A.E. Corp. v. Technodome.com, 106 F. Supp. 2d 860 (E.D. Va. 2000) (plaintiff’s motion for service), Case No. CA-00-00714-A (E.D. Va. Dec. 27, 2000) (defendant’s motion to dismiss), 2002 U.S. App. LEXIS 475 (4th Cir. Jan. 10, 2002) (defendant’s interlocutory appeal), which was the first in rem decision under the U.S. Anti-Cybersquatting Consumer Protection Act.
Counsel in the first Canadian court case overturning an Internet Corporation for Assigned Names and Numbers (“ICANN”) Uniform Dispute Resolution Policy (“UDRP”) decision in Black v. Molson (2002) 60 O.R. (3d) 457, 21 C.P.R. (4th) 52. Recognized by Justice Wright as having “considerable expertise in litigating domain name issues” (Endorsement on Costs, Court File No. 02-CV-231-828CM3, September 9, 2002).
Counsel in Cheaptickets and Travel Inc. v. Emall.ca Inc., (2007) 56 C.P.R. (4th) 81, 311 F.T.R. 295 and in Emall.ca Inc. v. Cheap Tickets and Travel Inc., 2008 FCA 50, 68 C.P.R. (4th) 381, wherein CheapTickets.ca successfully obtained the cancelation of a trademark for “Cheap Tickets” in a proceeding which went all the way to the Federal Court of Appeal. The CheapTickets.ca case also involved the first successful defense of a .CA domain name under the CDRP in Cheap Tickets and Travel Inc. v. Emall.ca Inc. (CIRA Dispute No. 0004, January 31, 2003).
Professional and Other Activities
Called to the Bar of the Province of Ontario, Canada in 1999. Licensed by the Law Society of Ontario to practise law in the Province of Ontario (Membership No. 41740O)
International Trademark Association
“Taxation of Internet Commerce” (First Monday, 1996)
“A Guide to ICANN Procedure and Policy”, Internet and E-Commerce Law in Canada (2000)
“The .CA Registry (CIRA) and “Public Interest” (Domain Name News, 2010)
“Why I support Canadian Presence Requirements for .CA Domain Names” (Circle ID, 2010)
“Cyberquatting Ain’t What it Used to be” by Zak Muscovitch (Intellectual Property Magazine, May 2012)
“Who Owns Your Craigslist Advert” by Zak Muscovitch (Intellectual Property Magazine, October, 2012)
Juris Doctor, Osgoode Hall Law School, Toronto, Ontario, Canada (1997)
Bachelor of Arts, University of Western Ontario, London, Ontario, Canada (1993)