What Is Cybersquatting?
Cybersquatting is registering, selling or using a domain name with the intent of profiting from the goodwill of someone else’s trademark. It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses.
History of Cybersquatting
The practice that’s come to be known as cybersquatting originated at a time when most businesses were not savvy about the commercial opportunities on the Internet. Some entrepreneurial souls registered the names of well-known companies as domain names, with the intent of selling the names back to the companies when they finally woke up. Panasonic, Fry’s Electronics, Hertz and Avon were among the "victims" of cybersquatters. Opportunities for cybersquatters are rapidly diminishing, because most businesses now know that nailing down domain names is a high priority.
How do you know if the domain name you want is being used by a cybersquatter? Follow these steps to find out.
– Check where the domain name takes you.
– Contact the domain name registrant. .
– Pay, if it makes sense.
What You Can Do to Fight a Cybersquatter
– 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.
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.
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:
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.
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: