...the whole concept of cybersquatting is something that's foreign to many people. Maybe, they've never heard the term cybersquatting before. They may register domain names for fun, or maybe even for a living without a high level understanding of cybersquatting law. And all of a sudden they find themselves being accused of cybersquatting. The last thing you want to do is be a cybersquatter.
Matt: Hi, it's Matt Plessner here for Cybersquatting Law Radio. We have been talking a lot about cybersquatting lately and what that means, and today we're going to talk about how to not be accused of being a cybersquatter. A very important topic and to help us out we are speaking today with attorney-at-law, Enrico Schaefer from the Traverse Legal office. Enrico, how are you?
Enrico: I'm doing great, Matt. Don't be a cybersquatter!
Matt: Absolutely not. And so, what are some basic things you would like people to know about, steps to take to avoid this?
Enrico: Well, the whole concept of cybersquatting is something that's foreign to many people. Maybe, they've never heard the term cybersquatting before. They may register domain names for fun, or maybe even for a living without a high level understanding of cybersquatting law. And all of a sudden they find themselves being accused of cybersquatting. The last thing you want to do is be a cybersquatter.
When we analyze the cases that come in for the trademark owners, one of the things we're trying to look at is, is the person who has registered the domain that is similar to our client's trademark, do they appear to be a habitual cybersquatter, someone who cybersquats for a living? Who is the respondent? Who is the potential defendant, the recipient of the don't cybersquat on me threat letter?. That's a big factor.
Sometimes, it will be some dentist in Chicago who looks like they own 23 domains, and they thought registering some variation of a major brand name as a domain name was a great idea. They don't know what cybersquatting is, they've never heard the word, cybersquatter, and they figure well, Go Daddy let me register the domain so it must be okay.
Matt: As we're talking about cybersquatting, we're talking about domain names and all that. Is there any way cybersquatting can relate to social networks? Like Facebook or Myspace, having fake pages. Does any of that relate?
Enrico: It does loosely, Matt, but not technically. So, the cybersquatting law is the Anti-cybersquatting Consumer Protection Act in the United States, and other countries have some variations of that. There's also a uniform domain name dispute resolution policy, or UDRP, that deals with the concept of being a cybersquatter or cybersquatting. The way those two, the UDRP and ACPR, work is they focus in on whether or not someone registered a domain name, www.trademark.com, whether or not someone registered a domain name with the bad faith intent to profit.
So, if it's a Facebook vanity URL and it's www.facebook.com/trademarkname, that's not the registration of a trademark. So, even though there's some debate within the legal community of whether or not you can accuse someone of cybersquatting to the right of the URL, to the right of the dotcom, to the right of the TLD, the general principles typically apply to the domain names themselves.
Now, Matt, it still might be trademark infringement to register a vanity URL in Twitter or Facebook, or some other social media platform, to the right of the dotcom. You could still be engaging in trademark infringement, but it would be under the Lanham Act, under the trademark infringement provisions, as opposed to the specific Nero ACPA cybersquatting provisions within the Lanham Act. So, you still need to be wary of trademark infringement claims and receiving threat letters if you register a social media vanity, and it violates some third party trademark.
Matt: OK. And if you get one of those letter, obviously the first thing to do is to call your attorney. Probably want to take that website down, right?
Enrico: Well, potentially. Now, that's a great point, Matt, because one of the things that a cybersquatting law attorney is going to tell you is don't do anything until I take a look at the facts of the matter and the underlying circumstances. Because the first issue is going to be okay, are you really a cybersquatter? Is the domain name similar to the trademark holder, not only in terms of the literal word and the letters and the phonetics, but also in terms of what are you doing with the domain name versus what is the trademark holder doing?
So, let me give you an example. There's a Delta Airlines, Matt, and there's a Delta Faucet, and those two companies each have a trademark for Delta, and they're allowed to coexist because no consumer is going to confuse the two companies. When you go to buy a faucet you're not going to go, oh gee I didn't know Delta Airlines was selling faucets now. That's the test. It's whether or not some of these can be confused. So, even if you have an identical domain name to a third party trademark, that doesn't necessarily mean you're a cybersquatter. You could simply be using that domain name to sell something completely unrelated to the trademark owner.
So, the first thing a cybersquatting attorney is going to do is take a look at the law, figure out what your use is, try and better understand why you registered the domain name. Were you trying to target that trademark owner and divert their traffic and money to you, and then it's going to make a determination as to how to handle the person, the company, the trademark owner who has sent the trademark infringement and cybersquatting threat letter to you. One of the things that can backfire is if you change your use, that is to say, you take down the website. It kind of makes you look like you're guilty. It might be that you're not a cybersquatter, that you're not guilty, and then you don't want to start from a position where you seem to have admitted something when you haven't.
Matt: So, what you're saying, Enrico, is goods and services sold by the company, obviously if they're too similar, like you said, if one sells faucets and one sells, oh I don't know, sinks or something like that, that's very similar. But if it's the Delta Airlines versus the hardware, then you're probably okay.
Enrico: It's very possible. Now, some trademarks are so strong, Matt, that you could actually own the entirety of the world. You can't start a Google faucet company. Google's brand and trademark is so big, so broad, and covers so much space that it's unlikely that anyone could use the word Google for anything in the world, so it goes to trademark strength. If you use a dictionary word like Delta even though it has nothing to do with airlines or nothing to do with faucets, it potentially has less protection, less breadth to its protection, than a completely arbitrary made up word like Nike that could only mean Nike.
The other thing that people need to understand as they try to make sure that they're not a cybersquatter is that trademarks protect more than the literal word. So, no other airline could use an airline brand similar to the word Delta. So not only is the word Delta protected for Delta Airlines, but the word, say, you couldn't start Pelta with a P airlines or Delda, D-E-L-D-A, as in airlines because the words are similar enough to where Delta could make the argument that a consumer might be confused about the source and origin of the goods and services.
The whole point of trademark law is to protect consumers, to make sure that consumers know who they're dealing with when they buy something. So, that's why we don't allow things similar to Nike because we're protecting the consumer from ending up buying something that they think is Nike quality but it turns out that it's not. It's another company having nothing to do with Nike.
Matt: Now, Enrico, I too am a business owner, small business owner, and I've got a website. My business is Solid Sound Music and we have mobile disk jockey services. Say, in Grand Rapids a record store opens up called Solid Sounds. Could they be in violation of cybersquatting?
Enrico: I think that you're in the gray area and you, as a potential trademark owner, could make the argument that it's too similar, too close, because just on those facts alone, Matt, I could certainly see how a consumer who's familiar with you might think you opened a music store if they saw the music store off the side of the road or saw an advertisement for the music store. So, if a consumer is likely to be confused of source and origin, then there's a trademark problem that can result in a claim of infringement. If it happens to be a domain name, let's say they registered the domain name as well, then it could be cybersquatting. They could end up being accused of cybersquatting.
Matt: Absolutely. Well, Enrico, thank you for talking with us today. Is there anything else you would like people to know about how to not be a cybersquatter?
Enrico: Yeah, just don't be a cybersquatter. Educate yourself as to what the law is before you register domain names and you do verify, by the way, that you are not infringing someone else's trademark when you register any domain name. So the, oh, Go Daddy let me register it, is no defense at all. As part of your registration agreement, the click wrap agreement, the eCommerce agreement with Go Daddy, they display this whole long contract, and part of that contract says you affirmatively state that you are not a cybersquatter when you register that domain name. So, be careful when you register domain names and make sure you understand what the law is. Contact a cybersquatting attorney who specializes in cybersquatting law if you get in trouble. Don't make the matter worse.
Matt: Well, thank you very much again, Enrico, for joining us today.
Enrico: Not a problem. It was my pleasure, Matt.
Matt: And we'll see you next time. Join us next time here on Cybersquatting Law Radio. I'm Matt Plessner.
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