CyberSquatting Lawyers in the Know

 

Cybersquatting is the situation under which a person or company buys website domain names of known trademarked names/brands before the rightful trademark holder has a chance to do so for financial gain

Back in the early 1990’s, just as the internet was starting to gain traction, early adopters realized that eventually, it would be important for every company to have a website. Some of those early adopters bought up domain names of popular companies, and waited–or, “cybersquatted.” When the rightful companies tried to buy the domain names for their own brands, the cybersquatters charged them large fees. Other forms of cybersquatting included buying the domain names of commonly used words, misspellings of popular brands or websites, or expired domains. Some cybersquatters bought these domain names with the intent to sell them at a higher cost, while others bought them with the intention to collect personal data, spread viruses, or steal identities when internet users unwittingly stumbled upon them.

The Intent to Use Trademark Application Must Be Submitted In Good Faith

 

Anti-Cybersquatting Consumer Protection ACT (ACPA)

Since the passage of the Anti-Cybersquatting Consumer Protection Act (ACPA) in 1999, cybersquatting has been illegal. The Act specifically protects against cybersquatters buying domain names that are either the same as, or very similar to, existing trademarks. Contact a Cybersquatting Lawyer to learn more.

However, cybersquatting can still be a problem.

Let’s say you have a trademarked brand name, and you want to build a website under the banner of that brand. When you search for the domain and another website comes up with a similar or even identical name, it may be wise to harbor a bit of suspicion if that “website” appears to be a mere place holder website (ie, the website contains only of ads with no content of substance, or displays a message of permanent, under construction), or worse if it is outright trying to sell you the domain name!

Conversely, if the website looks like it’s actually functioning with a valid purpose (beyond the use your trademark), it probably wouldn’t trigger cybersquatting complaint, because the owner of the domain isn’t holding it specifically to profit from its use of your name. In the event that this website is legitimately using this website (and not operating it to extort money from your valid trademark rights), you have several options. You can either find a different domain name altogether, or offer to buy the domain name from the owner. However, if the owner offers to sell you the domain name for an unreasonably large amount of money, it may very well be the case that they are cybersquatting.

 

You’ve Been a Victim of CyberSquatting: Now What?

Unfortunately, cybersquatters have the rather substantial advantage of the cold, cost-benefit analysis of the worth of filing a grievance vs. not doing anything.  Indeed, the amount of money you would have to pay to carry through with a full action may very well be more expensive than just buying the domain from them. However, if that’s not the case, and you want to take action with a Cybersquatting lawyer, you have two main avenues you can pursue: suing the cybersquatter under the ACCPA, or mediating with the cybersquatter under the Uniform Domain Name Dispute Resolution Policy (UDNDRP), which is basically a guideline for how to resolve domain name issues.

MEDIATION:

The UDNDRP was created by the Internet Corporation of Assigned Name and Numbers, the body that manages the domain name system online. Mediation is often the better, less expensive, and quicker, and doesn’t require you to hire a cybersquatting lawyer.

You can use the UDNDRP standards to resolve a dispute if the domain is identical or very similar to a trademark you own, or if it is being used in bad faith (say, to defame your trademark, or for financial gain).

In the event that the mediation results in a ruling that is in your favor, you can cancel the domain name, or use it for yourself.

LAWSUIT:

If you decide to go through the ACPA, you will be suing for the rights to the domain name in federal court. If the ACPA case is ruled in your favor, you win the right to either cancel or use the domain name, and can also win statutory damages in the amount of anywhere from $1,000.00 to $100,000.00.

You can only win an ACPA case by proving that your trademark was registered before the domain name was purchased; that the domain name is identical or very similar to the trademark; and that the domain name was used in bad faith (ie, with an intent to profit by cybersquatting).

One specific issue you might encounter with an ACPA suit is cybersquatters who live abroad. Federal courts sometimes have issues bringing suits against people who do not live in the United States. If your cybersquatter doesn’t live in the U.S., it may be more difficult to bring a successful suit against them.

One way the court gets around this is called in rem jurisdiction. This basically means that the court can rule on US-based property, even if the owner is outside of the physical bounds of the United States. In order to sue in rem, the domain must be registered with a US company/registrar.

However, there are even specific problems with suing in this manner. You are required to give notice of your plan to sue to the cybersquatter, and then wait a specific amount of time after you give notice. If the cybersquatter knows what they’re doing, they will likely move the domain to a foreign registrar, at which point you will be prevented from suing them in US federal court. If they do not move the domain, you can lock it down after the time requirement by sending a copy of the lawsuit to the domestic domain registrar and requesting a lock. This will prevent the cybersquatter from moving the domain to a foreign registrar, and will allow you to sue.

Cybersquatting Lawsuits Require Bad Faith

 

The crux of a Cybersquatting action is bad faith. If a domain is legitimately used by the owner for their own purposes unrelated to your trademark, you cannot prove bad faith and its derivative, intent to deceive. Worth noting, an obstacle to proving bad faith are the protections afforded by free speech rights under the first amendment. Indeed, sometimes, people buy domains specifically with the purpose of issuing complaints about a given company–so-called “gripe sites.” As long as the complaints don’t qualify as libel or defamation, and aren’t used primarily for profit (ie, posting negative content to pressure the company to buy the domain), gripe sites are protected by the first amendment, and therefore do not qualify as evidence of bad faith.

Proving bad faith in a federal suit is difficult, and a cybersquatting lawyer should most certainly be consulted before commencing the action.

 

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