Cybersquatting and Domain Names

Your domain name is a valuable asset.  Not only is it important that you timely renew your registration but it also is important to make sure no one is misusing your domain name.  Losing your domain name or allowing a typosquatter to use a similar name can cost you thousands of dollars a day in lost sales or potential contracts.

Cybersquatters monitor when domain names are up for renewal.  If the domain name is not renewed, cybersquatters buy the expired domain names with the hope that the rightful owner then will be forced to buy the name back at an inflated price.  If your business is new or you are adding new products, you may find that the name—including a trademarked name—already taken by a cybersquatter.  And there are cybersquatters who engage in typosquatting by registering domain names that intentionally misspell or transpose letters or words in trademarks, and then set up bogus directory sites to make money with click through-links to your competitor’s websites.

Retrieving domain names from cybersquatters

We have retrieved cyberpirated domain names, using the ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP), which provides a quick method to have your domain name transferred.

The UDRP involves filing a complaint with an arbitration service authorized to hear the case.  The service appoints a panel of one or three qualified arbitrators to hear the case, which is conducted entirely via written submissions.  At the end of the process, the panel can order the transfer of the domain name to the complainant.

A trademark holder who believes its trademark is being improperly used as a domain name by another may file under the UDRP.  The trademark can be either a registered mark or a common law trademark.  The trademark owner must show that 1) the disputed domain name is identical or confusingly similar to the mark of the trademark owner, 2) the user has no rights or legitimate interest in the domain name, 3) the user has not been commonly known by the domain name, 4) the user is not making a legitimate noncommercial or fair use of the domain name, but rather is using the domain name for commercial gain and misleadingly diverting customers, and 5) the user has registered and is using the domain name in bad faith.

Bad faith includes acquiring or registering the domain name primary for the purpose of selling or otherwise transferring the registration to the legitimate trademark holder or to a competitor of the legitimate trademark holder; registering the domain name to prevent the legitimate trademark holder from using the domain name; using the domain name to disrupt the business of a competitor; or attempting to attract internet users through confusion with the trademark.

Other anticybersquatting measures

You may also pursue cybersquatters using the Anticybersquatting Consumer Protection Act (ACPA), although it is a longer, more costly process, which is filed in federal court.  The standards that the trademark owner must meet are similar to the UDRP.  The UDRP panel can only order the registrar of the domain name to transfer the name.  On the other hand, under the ACPA a court may award actual or statutory damages in addition to transferring the domain name.  In “exceptional cases,” the court may also award attorneys’ fees.

You may also register your trademark with the Trademark Clearing House.  By registering, you warn potential domain name registrants of possible infringement, and the clearinghouse notifies you of the potential domain name conflict so that you can take pro-active measures to protect your trademark.

Balough Law Offices can help you retrieve your domain name from cybersquatters under the UDRP or the ACPA.