The prevalence of individual and business use of the Internet has given rise to numerous disputes relating to the selection, presentation, and management of domain names. Domain name disputes include cybersquatting, typosquatting, cyberpoaching, cybergriping, pagejacking and personal names as domain names.
Cybersquatting occurs when an individual or entity deliberately and in bad faith registers a domain name containing a trademark to which they have no rights. If someone registers a domain that uses your trademark (or something that is confusingly similar to your trademark) with the intention of selling it to you for profit or using your business reputation to make money, you may be a cybersquatting victim. Specific motives of cybersquatters may include extorting payment from a trademark owner, collecting multiple domain names to sell to the true trademark owner, diverting Web site visitors to other sites, diverting consumers to a competitor’s and defrauding consumers.
It may be illegal for a cybersquatter to even register the domain, regardless of whether they use it for commercial purposes. To prevail over a cybersquatter, you must show that he or she had a bad faith intent to profit from your trademark and that the domain registered or used by the cybersquatter is identical or confusingly similar to your trademark. Some of the factors a court will consider in determining whether a cybersquatter acted in bad faith include the cybersquatter’s intent to divert traffic for economic advantage or to tarnish or disparage your mark, offer to sell the domain to you or anyone else for profit, use of false contact information when registering the domain, prior practice of similar behavior and pattern and practice of registering numerous domains similar or identical to famous marks.
If a court determines that he or she is cybersquatting, it may order the cybersquatter to forfeit the domain and transfer it to you, the rightful trademark owner. You should vindicate your rights against cybersquatters by using the appropriate legal tools and remedies to secure your assets.
Uniform Domain Name Dispute Resolution Policy (“UDRP”)
The UDRP is an alternative to litigation that allows you to pursue cybersquatters through arbitration. In this administrative process, you must show that the domain registered by the cybersquatter is identical or confusingly similar to your trademark, he or she has no legitimate interest in the domain and the domain was registered and used in bad faith. If you prevail, the domain may be transferred to you or cancelled.
Anti-cybersquatting Consumer Protection Act (“ACPA”)
The ACPA provides trademark holders with a right of action against anyone who registers, traffics in, or uses a domain name that is identical to or confusingly similar to a distinctive mark, or dilutive of a famous mark, if that person is found to have had a bad faith intent to profit from the goodwill of the trademark. In addition to traditional trademark remedies, a successful plaintiff may chose statutory damages ranging from $1,000 to $100,000 per domain name.
In a typical typosquatting case, a typosquatter registers a domain name that includes typographical errors that the public is likely to make while trying to enter the domain address for the site containing the trademarked name. The typosquatter hopes that users will accidentally land on his or her site instead of the real site. Once they do, users will be presented with advertising links that generate revenue for the typosquatter. If you are a typosquatting victim, a court may rule that your trademark has been infringed, in bad faith, by the intentional misspelling of your trademarked name for the typosquatter’s intended purpose.
If an individual or entity registers a domain name that you had previously registered and which subsequently became available (e.g. by an accidental lapse in registration, error or fraud), and then tries to sell the domain name back to you, you may be the victim of cyberpoaching and should act to restore your domain name.
Someone who has had a bad experience with your business might register a domain name that is similar to your trademarked name, for the purpose of criticizing you and your business. With the right legal expertise, you may be able to challenge the registrant depending on a variety of factors including the location of the defendant and what other uses he or she has made of the site.
Pagejacking occurs when Internet users are diverted from a legitimate site that is generated from a search engine result to an imitation site. The imitation site then directs them to an unrelated and undesirable site. Pagejackers copy the legitimate site’s contents and metatags and place them on a new site that is then submitted to search engines. The copied site may appear above the legitimate site in search engine results. If your page has been jacked, you should act to restore your rights, as pagejacking is prohibited as a deceptive practice.
Personal Names as Domain Names
The ACPA provides civil liability for anyone who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, and with the intent to profit from the name by selling the domain name for financial gain to that person or any third party. California Business and Professions Code section 17525 provides for a comparable state law right of action. There is no requirement that the personal name be trademarked in order to be protected. Contact us to discuss your case if your name has been registered as a domain name without your consent.