How to fight cyber squatters

What You Can Do to Fight a Cybersquatter

A victim of cybersquatting in the United States has two options:

  • sue under the provisions of the Anticybersquatting Consumer Protection Act (ACPA), or
  • use an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN).

Trademark experts consider the ICANN arbitration system to be faster and less expensive than suing under the ACPA, and the procedure does not require an attorney.

Using the ICANN Procedure

In 1999, ICANN adopted and began implementing the Uniform Domain Name Dispute Resolution Policy (UDNDRP), a policy for resolution of domain name disputes. This international policy results in an arbitration of the dispute, not litigation. An action can be brought by any person who complains (referred to by ICANN as the “complainant”) that:

  • a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights
  • the domain name owner has no rights or legitimate interests in the domain name, and
  • the domain name has been registered and is being used in bad faith.

All of these elements must be established in order for the complainant to prevail. If the complainant prevails, the domain name will be canceled or transferred to the complainant. However, financial remedies are not available under the UDNDRP. Information about initiating a complaint is provided at the ICANN website.

Suing Under the ACPA

The Anticybersquatting Consumer Protection Act (ACPA) authorizes a trademark owner to sue an alleged cybersquatter in federal court and obtain a court order transferring the domain name back to the trademark owner. In some cases, the cybersquatter must pay money damages.

In order to stop a cybersquatter, the trademark owner must prove all of the following:

  • the domain name registrant had a bad-faith intent to profit from the trademark
  • the trademark was distinctive at the time the domain name was first registered
  • the domain name is identical or confusingly similar to the trademark, and
  • the trademark qualifies for protection under federal trademark laws — that is, the trademark is distinctive and its owner was the first to use the trademark in commerce.

Defenses to ACPA lawsuits. If the accused cybersquatter demonstrates that he had a reason to register the domain name other than to sell it back to the trademark owner for a profit, then a court will probably allow him to keep the domain name.

For extensive information on cybersquatting, domain names, and changes to trademark statutes, get Trademark: Legal Care for Your Business & Product Name, by Stephen Elias and Richard Stim (Nolo).

http://domaininglaws.com