Cybersquatting is the practice of registering an internet domain name with bad faith intent. That is, it is the registration of a web domain for the purpose of profiting from the customer recognition or goodwill associated with the brand or trademark owned by someone else.
It is a practice that, at this point, is as old as the World Wide Web itself.
The form of cybersquatting that will be most familiar to the casual onlooker is the registration of a website URL with another company’s name and then issuing a “ransom” demand offering to sell that domain back to that company.
Cybersquatting is most likely to occur when a company’s reputation precedes its own domain registration efforts.
That is, when you let the world know of your business or product name before you register the domain name utilizing that term, you are in danger of cybersquatting.
This Article will discuss your options for dealing with cybersquatting or cybersquatters—and how US trademark registration will help you.
How to Respond to Cybersquatting
Both legally and practically, you have a number of different options available to you if you are a victim of cybersquatting.
First, from the practical standpoint, you can simply pay the “sale price” (ransom demand) requested by the cybersquatter.
This is an unpalatable option, perhaps. However, depending upon the amount demanded, it can be the least expensive option available. Relative to the cost of litigation and prolonged, back-and-forth settlement negotiation at your Michigan trademark attorney’s hourly rate, the sad truth is that this may be the case.
Otherwise, from the legal standpoint, if you want to take the cybersquatter to the mattresses, as it were, you have a few different avenues available to you.
The Unform Domain Name Dispute Resolution Process
The Uniform Domain Name Dispute Resolution process (“UDNRP”) is an international mechanism for resolving internet cybersquatting domain name disputes.
A UNDNRP complaint is filed with an agency known as ICANN. ICANN administers the web domain system on an international basis.
Generally, you will have grounds for a UDNRP complaint if:
- The registered domain name is confusingly similar (or identical) to one in which you maintain ownership rights;
- The cybersquatter has no legitimate interest in the name. (See below.)
- The cybersquatter registered or acquired the domain name in bad faith.
“Bad faith” means that:
- The cybersquatter registered or acquired the name for the primary purpose of selling, renting, or transferring the name to you for excess cost; or
- To prevent you from reflecting your trademark in a corresponding domain name; or
- Attempted to attract, for commercial purposes, internet users who would otherwise be visiting your website instead; or
- Registered the domain name for the primary purpose of disrupting your business; and has
- No legitimate non-commercial “fair use” for the domain name.
The remedies available to you under the UDNRP system are simply to either have the domain name registered by the cybersquatter canceled or transferred to you.
Money damages or other awards are not available under this regime.
The Anticybersquatting Consumer Protection Act
Less often utilized than the ICANN procedure above, the Anticybersquatting Consumer Protection Action (ACPA) provides a Federal cause of action for cybersquatting.
That is, it provides the legal basis under which you can sue the cybersquatter in Federal court.
Under the ACPA, you may have a cause of action for cybersquatting where a cybersquatter:
- Has registered your domain name with the same sort of bad faith intention described above;
- And the name is confusingly similar to a distinctive or famous mark.
What is meant by “mark?” This is legal term for, in this case, a word or phrase used to indicate the source of goods or services sold or transacted in US commerce.
Commerce means “trade.” Thus, the word “trademark” is born.
In order to prevail in an ACPA lawsuit against a cybersquatter, you will need to prove a number of factors. However, for purposes of this Article, the first of them is the most important.
That factor is the requirement that you have ownership rights in the domain name.
Under US law, “ownership” means that you have the common law right to the exclusive use of the name and that you have registered the name (or a confusingly similar name) with the US Patent and Trademark Office (USPTO) as a Federal trademark.
What Is Trademark Registration?
You can begin to see from the above how registering your business name or domain name as a Federal trademark will help you to fend off cybersquatters.
But what is Federal trademark registration?
Trademark registration is a US Federal legal process that will grant to your business name, product name, domain name, slogan, or logo the exclusive right of use throughout the United States.
With a registered trademark in hand, you can:
- Oppose and seek cancellation of later, conflicting trademark registration applications;
- Chill such applications from being filed in the first place with your publicly viewable registration;
- Request that US Customs block the import of infringing knock-off products;
- Send cease and desist letters to infringers;
- File suit in Federal Court for trademark infringement.
You are also better protected from cybersquatting when you have a registered trademark.
How Does a Registered Trademark Protect Against Cybersquatting?
Trademark registration is your “foot in the door” into Federal court when you have been the victim of cybersquatting.
The US Trademark (Lanham) Act requires that you have registered your trademark before suing an infringer in Federal Court.
The ACPA, above, likewise requires that you establish your ownership of the shared term or confusing domain name in order to sue under that Federal statute.
The UDNRP also requires that you have ownership of the domain name registered by a cybersquatter to enter into that process, as noted above.
Even if the UDNRP or other process requires ownership but not, by name, at least, actual registration, the quickest, easiest way to meet that standing requirement is to have registered your trademark with the USPTO.
No need to have a conversation about it if you have, in other words. You will be able to skip straight to the bad faith of the cybersquatter if you’ve tended your own garden first.
How to Register a Trademark for a Domain Name
Registering a trademark for a domain name is no different than registering a business name, product name, slogan, or logo as a US trademark.
A trademark is, essentially, a mark used in interstate commerce to identify you as the source of your product or service to consumers. Unlike patent or copyright registration, the core purpose of US trademark registration is to ensure that consumers in the United States know what they are buying and from whom.
Thus, a domain name, like any other trademark, must be used in connection with the sale or transaction of a product or service to be registrable as a trademark. If your website serves some other purpose (such as a purely creative or parodying purpose), its domain may not be registrable as a trademark.
Presuming that it is commercial, however, your first step is to contact an experienced US trademark attorney, whether you are located in Detroit, Livonia, Ann Arbor, Southfield, Royal Oak, Ferndale, Grand Rapids, or anywhere else in Michigan.
A good trademark lawyer will conduct a thorough, professional trademark clearance search to ensure that no one else has registered your mark (or anything confusingly similar)—or has been using it longer in commerce generally.
If the mark is clear, your Michigan trademark attorney will expertly draft your registration application to sidestep any easily avoidable errors, file it properly with the USPTO—and the defend it against any incoming Office Actions or Oppositions.
Alternatively, you can risk your entire brand and your entire defense against cybersquatting by doing it yourself.
Why not save a few bucks? Only the entire value of your business rests upon your brand and your ability to conduct business online, right?
Do it right. Hire professional legal assistance.
Grab Your Domain Names Before Filing a US Trademark Registration Application!
Register your domain name trademark as soon as you know you will be using it in commerce.
However, a word to the wise: Purchase or reserve the domain names and all remotely related domain names before filing your trademark application!
Isn’t this the wrong way around, you ask?
No. The reason is that the USPTO’s trademark register—including all filed pending applications—is public record. That means that anyone can view it.
Including cybersquatters.
If you file your trademark registration application before you’ve secured your related domain names, there is a better than reasonable chance that a cybersquatter will snap it up after viewing your filed application and then attempt to ransom it back to you.
If the cybersquatter doesn’t demand the moon and the stars but just enough to be worth his or her effort while still hovering under what you’d have to pay a trademark attorney to litigate, you’ll be in the unfortunate position of paying the cybersquatter off.
You’ll be back to Option A, offered way up at the top of this Article.
Secure your domain names. Put them in your pocket. Then file your trademark registration application.
Contact a Detroit, Michigan Trademark Attorney
If you are dealing with a cybersquatter or simply want to get out in front of them by registering your domain name as a US trademark, you need the assistance of an experienced trademark attorney.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, and Office Action refusal response matters.
You don’t need to hire a lawyer down the street just because she is down the street. Trademark law is a Federal practice area, and we represent clients across all 50 states—and globally—for US trademark registration and renewal matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.