2012.03.28

Domain Name Theft versus Cybersquatting

Welcome to Domain Name Law Radio. Domain names are valuable assets.  Domain disputes, domain theft, cybersquatting, and domain monetization are important issues.  Our domain lawyers have answers to your domain name questions. 

This is Domain Name Attorney Brian Hall with Traverse Legal, PLC, a law firm representing domain owners and those who have had their domains taken from them throughout the United States and the world.

Today, I will be examining the difference between domain name theft and cybersquatting.  Let’s first define each of those individually, and then we can look at the differences.

Domain name theft is exactly what it sounds like.  It’s when someone has stolen your domain name.  This can be done through hacking or some other improper access to your domain name.  It doesn’t necessarily involve trademark rights or other items that are necessary under cybersquatting law. 

So, let’s look at cybersquatting law.  Cybersquatting law can be many different things, but the two most prominent are the federal law within the United States known as the Anticybersquatting Consumer Protection Act, or ACPA. That’s the first one.  The second one is an international arbitration known as the Uniform Domain-Name Dispute Resolution Policy, and that’s also known as the UDRP.  While both of the requirements under those particular items are a bit different, they essentially involve these three requirements. 

The first requirement is that you own trademark rights in whatever the corresponding domain name is.  Put another way, you have to have legitimate trademark rights in the domain itself.  The second element is that the domain name that’s at issue must be confusingly similar to your trademark.  So, if you own a trademark for Google and the domain name is Googles with an S added to it or some other typographical variation, most likely that’s confusingly similar enough under the requirements.  And third, you need to have a bad faith intent to profit from that domain name.  And under the ACPA, there is a whole list of factors that a court will look at in determining whether or not the individual has the requisite bad faith intent to profit from the domain name.  Needless to say, if they have a portfolio of domain names that include other typosquatted or cybersquatted domain names, or if they’ve hidden their domain registration information via a proxy service or otherwise, or if they’ve tried to sell the domain back to you for an exorbitant sum of money, all of those would be bad faith factors that lead to a likely finding of cybersquatting. 

So, let’s talk a bit about the differences between domain theft and cybersquatting.  The number one difference, as I alluded to earlier, is that domain theft does not necessarily require that you have trademark rights in the domain name.  If you own a generic domain name that was taken from you, such as chairs.com, you have to rely upon common law causes of actions such as conversion or possibly other hacking or theft related causes of action when you file a lawsuit.  Conversely, if you do have trademark rights in your corresponding domain name, once again, for example, if you’re Nike and the domain that has been registered Nikee.com, then you can rely upon your trademark rights and bring an ACPA cause of action.  And while you might be able to bring both causes of action in some cases, the requirements and the elements necessary to prove those causes of action are different and the remedies available under them are different.   For example, a conversion cause of action for domain name theft would require that you establish actual damages, whereas an ACPA or Anticybersquatting Consumer Protection Act lawsuit entitles the prevailing party or trademark owner up to $100,000 in statutory damages if, in fact, you’re able to prove bad faith cybersquatting. 

So, once again, the main difference between domain name theft and cybersquatting lies in the requirements related to ownership of a trademark, as well as what causes of action you can bring and the remedies associated therewith.  Regardless, a domain name attorney can advise you in the instance that you believe you have rights to a domain name. Alternatively, if you owned the domain name and it was taken from you, or, ultimately, if someone owns domain names that you believe are confusingly similar to yours, a qualified domain name lawyer will be able to advise you as to your best causes of action and what kind of remedies you’re looking at. 

So, once again, this has been Brian Hall with Traverse Legal, PLC.  I hope this show regarding domain name theft and cybersquatting has been helpful. 

You’ve been listening to Domain Name Law Radio, where domain names are always the topic of the day.  Whether you are a domain name dispute attorney or a client, we are the number one resource for all your domain name questions.

COMMENTS

ACPA cybersquatting is different than UDRP cyber squatting. Cyber squatting is different than a stolen domain name. Whatever domain name issue you are facing, you need a Internet law attorney who understands your specific domain name issue.

Nice post, however you have not been into the topic of 3L domain names, I think these are special domain name cases that need special treatments. Since 3L domain names are usually the acronym of many businesses out there, it would be stupid to file a case against the owner of the domain name claiming rights to it.

One comment I liked regarding the topic is "These cases are getting silly now, are no domains safe anymore when companies think of a name, trademark it and think it gives them rights to the domain name too"


Check this case out titled "Francois Carrillo’s ZUT.com hit with UDRP":http://domainnamewire.com/2012/04/01/francois-carrillos-zut-com-hit-with-udrp/

Thanks for all this info

Thank you for providing the above information.

However, would you kindly elaborate why using a proxy service to hide domain registration information (I presume you are referring to "Whois Privacy") is being considered "bad faith"?

Whois Privacy is not prohibited under ICANN policies and is offered by virtually every registrar, and is commonly used by many registrants (private as well as business) for a variety of reasons.

I have a hard time following a "bad faith" argument for using a permissible, readily available, and commonly utilized service.

Hi Brian,

This is a good write and it is interesting reading through. Please I have a question for you.

If I registered Nikee.com as you rightly sited as an example and the name is what I am trading with in my native country, will Nike be able to have a case to pursue? I am assuming I am not doing anything to impersonate Nike in order to benefit from such financially. The domain name is just coincidence. Funny too, people bear "Nike" as a name in my country.

Ed

Very interesting article Brian. I'll be sending people over here who want to learn a little more about domain theft and cybersquatting. You've got all the basics covered pretty well.

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