Welcome to Cybersquatting Law Radio where domain name, cybersquatting, and trademark domain name issues are always the hottest topic of discussion. Whether you are a trademark owner who believes they are a victim of cybersquatting or a domain owner wrongly accused of trademark infringement, you will find all the tips you need to protect your rights right here.
This is Brian Hall, an attorney with Traverse Legal, PLC, a law firm dealing with cybersquatting issues throughout the world. Today, I will be answering the question: “How to deal with cybersquatting?”
Before I answer that question, let me define cybersquatting for everyone. Cybersquatting is the unauthorized registration or use of a domain name that incorporates the trademark of another. So long as somebody has trademark rights – be it common law or registered – and another registers or uses a domain name with a bad faith intent to profit from that domain name, cybersquatting occurs.
So the question I often receive from trademark owners and those who believe they are victims of cybersquatting is how do I deal with this cybersquatting that I have identified? And there’s several options available. However, the first thing that’s necessary is for a qualified and trademark and cybersquatting attorney to confirm that, indeed, the domain name registration or use would qualify for cybersquatting. And that would qualify cybersquatting under either the ACPA or Anticybersquatting Consumer Protection Act, which is a United States piece of legislation and law, or, what’s known as the UDRP or Uniform Domain-Name Dispute-Resolution Policy, which is a policy that outlines what is and what is not permissible domain registration and use.
A domain name attorney will be able to tell you whether or not you have sufficient trademark rights, whether or not the domain name registration or use qualifies as a legitimate registration or use, and whether or not you’d be able to satisfy the requirement of showing that there is bad faith on behalf of the domain name registrant. Once that domain name attorney gives you that advice, he’ll be able to advise you of the options to deal with cybersquatting, and there are many.
The first is a cease and desist or threat letter. If you have determined that the domain registration or use is cybersquatting – an actionable cybersquatting that you could pursue further – a cease and desist letter from the trademark owner is always a good first step. It allows you to put the domain name registrant or user on notice of the cybersquatting, demand that such use or registration stops, and oftentimes, requires that the domain name be returned to you in order to avoid further action.
Now, it’s important to recognize that domain name registrants may or may not respond to this kind of letter. In the event that the do respond, they may provide defenses that make them confident that they would be able to prevail if you did pursue them for cybersquatting. In that situation, you should be prepared to negotiate, if necessary, a resolution. However, if the recipient of the letter does not respond to it, then you’re left to determine what to do next.
And this brings us to your next option, which is known as the UDRP. You can file a complaint with either the National Arbitration Forum or NAF, the World Intellectual Property Organization or WIPO, or another forum that handles UDRPs in order to get the domain transferred to you. Now, a UDRP complaint requires that you meet several factors in the complaint itself. You need to establish that you own trademark rights, that the use made by the domain name registrant is not legitimate, and that they registered and are using the domain name in bad faith. Since the UDRP requires all those things, it’s imperative that you establish all of them in your UDRP complaint. A UDRP attorney can assist you with that by looking at other cases that have been decided and putting you in your strongest position to prevail. If you are successful with a UDRP complaint, the domain name will be transferred from the registrar to you within a certain amount of time, absent the domain name registrant challenging that decision in a court of law.
You next option is a lawsuit. You can file a lawsuit under the ACPA or Anticybersquatting Consumer Protection Act, which is part of the Lanham Act, and you would file it in a federal court in the United States. You also need to establish that you are the owner of a trademark, and that they have made a bad faith intent to profit and use registration or trafficking of that domain name. So, it’s imperative that you are able to establish not only that you own trademark rights and that they’re using, trafficking or the registrant of the domain name, but that they had the requisite bad faith intent to profit from that registration, use or trafficking. The ACPA defines what factors a court will look at in determining whether or not there is a bad faith intent to profit. Regardless, a qualified cybersquatting attorney can advise you on these issues and help tell you what risks you may face after you file the lawsuit. And it’s important note that, like any other lawsuit, a cybersquatting lawsuit requires the initiation of the lawsuit via service of process on the registration and service of a complaint to be exact and all that goes with a lawsuit, including discovery, motions and possibly a trial on the merits.
So, each of those options, a threat letter, a UDRP or a lawsuit, carry with them different risks, different costs, and different considerations. I always advise my clients that those options are there for a reason and that you can choose the one that fits your budget and fits your goals. If you need any additional assistance on that, I encourage you to discuss it with a cybersquatting lawyer.
So, once again, this has been Brian Hall answering your question: “How to deal with cybersquatting?”
You’ve been listening to Cybersquatting Law Radio. Whether you are filing or defending a claim of cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) or Anticybersquatting Consumer Protection Act (ACPA), we have a cybersquatting and domain dispute attorney ready to answer your questions.