Internet Cybersquatting: Definition and Remedies
Cybersquatting is generally defined as the registering, sale or use of a domain name containing a trademark that the registrant doesn't have the rights to with the intent to profit from the goodwill of the mark. For example, Dell filed a lawsuit in 2007 against another party that had registered the URL "DellFinacncialServices.com" and 1,100 others, alleging cybersquatting. In that case, the defendants had registered misspelled confusingly similar domains to those owned by Dell with the intention of capturing the traffic from people mistyping "DellFinancialServices.com."
Cybersquatters generally depend upon the goodwill associated with someone else's trademark. By buying up domain names that are closely linked with a pre-existing business or person, cybersquatters hope to profit through an association with well-known trademarks or through sale of the domain to the trademark owner. Cybersquatters also may have more nefarious purposes such as capturing personally identifying data from unsuspecting users mistyping the URL.
Thankfully, there are legal options to help you recover from a cybersquatting-related offense, including the Anti-Cybersquatting Consumer Protection Act (ACPA).
Have I been Cybersquatted?
There are few ways you can tell if you have been the victim of cybersquatting. Generally, you should first check out the domain name that you want to register to see if it leads to a legitimate website. If the address is of a website that looks to be functional and related to the subject of the domain name, then you have most likely just come to the game too late and will have to offer to buy the domain name unless you can make a case for trademark infringement.
But if any of the following scenarios apply to the domain name you're observing, cybersquatters may be involved:
- The website is "under construction" for a long time (a year or more)
- Your browser shows a "cannot find server" error, or
- The website bears no relation to the domain name
These results do not absolutely mean that someone is cybersquatting on your trademark, though, particularly if the website in question really is still under construction. Domain name owners can reserve the domain name for two years, so a website that is under construction for more than a year may just mean that the owner wants to take his or her time making the site. You can also visit WhoIs.com to look up the domain name registrant for free and then contact that person to see whether it is being used for a valid purpose or available for purchase.
In some situations, unfortunately, it may be easier and cheaper to pay the ransom for the domain name. Litigation can be very costly and time-consuming; and even if you win your lawsuit, there is no guarantee that you will be able to recover your attorney's fees, which may be more than the cost of buying the domain name to begin with.
Lawsuits under the ACPA
ACPA is designed to allow trademark owners to sue an alleged cybersquatter in federal court. If the trademark owner wins, these lawsuits generally result in a court order requiring the cybersquatter to transfer the domain name to the trademark owner and, in some situations, pay monetary damages as well.
For a plaintiff to be successful in such a lawsuit, he or she must be able to prove:
- That the trademark was distinctive at the time the domain name was first registered
- That the domain name registrant (the alleged cybersquatter) had a bad faith intent to profit from the trademark
- That the registered domain name is identical or similar enough to cause confusion with the real trademark, and
- That the trademark is protectable under federal trademark law (meaning that the trademark is distinctive and its owner was the first to use the mark in commerce).
The registrant -- in order to defend against the claim -- must show the judge that he had a reason to register the domain name other than selling it later to the trademark owner or otherwise exploiting the goodwill associated with the trademark.
ICANN Arbitration System
The ICANN started its arbitration system after assuming control of domain name registration. ICANN began using the Uniform Domain Name Dispute Resolution Policy (UDNDRP), an international policy aimed at arbitrating most domain name disputes instead of litigating. Under this policy, an action for arbitration can be brought by anyone that claims that:
- The domain name owner has no rights or legitimate interest in using the domain name,
- The domain name in question is identical or similar enough to be confused with a trade or service mark that the claimant has rights to, and
- The domain name was registered in bad faith.
If the trade or service mark owner can establish each of these elements during the arbitration, they will win. When this happens, the domain name will be cancelled and transferred to the claimant. However, there is no possibility of money damages being awarded under UDNDRP.
Dealing with an Internet Cybersquatter? Get Professional Legal Help
As a business owner, you will be responsible for handling many of the tasks required to make things work. But if you're confronted by a cybersquatter and need to take legal action, you're better off contacting a legal professional. If you need help with this or any other small business needs, contact a business and commercial law attorney in your area.