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.

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Cybersquatting, Domain Name Disputes and Trademarks: The Basics Explained

thedomainess.com » Blog Archive » Cybersquatting And Your Domain Name

When it comes to domain names, don’t think that you only need to worry about the ones that you registered. This is because with the phenomenon of cybersquatting, domain names that are similar to your company’s trademark could be registered to unscrupulous webmasters, intending to use them in bad faith. What happens is once the cybersquatter has gotten sales or Adsense clicks from their domain name, they will try to sell it to the original entity holding the trademark. When things get to this point, the price is significantly higher, sometimes even thousands of dollars. This is despite the fact that the individual or organization buying the domain name originally had the rights to it in the first place.

So, how does a company protect themselves from cybersquatting? Well, first they need to be aware of whether or not domain names related to their trademark are being registered and used in bad faith. The best way to do this is to sign up for Google Alerts. This is a service that allows individuals or organizations to track any websites, comments, articles, etc. that are being made about their website or brand.

If they receive an alert that shows a domain name that is similar to their trademark, they could be dealing with a potential cybersquatter. The keyword of course is ‘potential.’ The person may not have any intention on selling the domain name back, though they are still using it in an illegal manner.

Technorati Tags: domain name disputes, cybersquatting, trademarks

What is Trademark Infringement, Cybersquatting, Dilution? Check out Citizen Media Law Project Legal Guide

Citizen Media Law Project's Legal Guide now has a resource for trademark and cybersquatting.

CMLP Launches New Legal Guide Section on Intellectual Property | Citizen Media Law Project

# Trademark Infringement: Trademark infringement happens when you use a trademark owner's trademark or a similar mark in a way that is likely to confuse the public into believing that the trademark owner is the source or sponsor of your products or services. This is the most common type of trademark claim, and it effectuates trademark's primary purpose of avoiding consumer confusion. See What Trademark Covers for details.

# Trademark Dilution: Trademark dilution happens when you use a trademark owner's famous trademark in a way that is likely to weaken its capacity to identify the trademark owner's goods or services or to tarnish the wholesomeness of the mark. The trademark owner need not show that you created consumer confusion, and dilution may occur even if your goods or services are completely different from the trademark owner's. Because of dilution law, it's probably not a good idea to call a blog "Kodak News" or "McDonald's Blog," unless it is actually about Kodak or McDonald's (in which case you should read Using the Trademarks of Others carefully). For details on trademark dilution, see What Trademark Covers.

# Cybersquatting: Cybersquatting happens when you register, use, or sell a domain name with the intent to profit from someone else's trademark. Congress passed the Anticybersquatting Consumer Protection Act in 1999 to stop speculators from buying up multiple domain names and selling them at exorbitant prices to the legitimate owners of the associated trademarks. If your use of a trademark owner's trademark in a domain name does not fit this stereotypical model, you should be able to avoid cybersquatting liability. For details, see the Cybersquatting section.

Technorati Tags: Trademark Infringement, Cybersquatting, Dilution

Why Does the ACPA Preclude Domain Registration of Trademarks? What Makes Domain Names So Special?

ACPA Legislative History: Registering Domain Names of Established Trademarks Is Akin To Cyber-Piracy . Did you ever wonder what Congress and industry experts found in drafting the Anti-Cybersquatting Protection Act (ACPA)? See this extended post for legislative history highlights.

Many judges in the US and abroad simply don't understand the internet, let alone the domain name registration system or ICANN policies.  Too often, cybersquatting complaints under the ACPA are met with blank stares - or even worse yawns - from the bench.   

• If trademarks can be 'fairly used' to describe products or services consistent with trademark holder rights, why can't a third party use a trademark in a domain name? 
• And if trademarks can be used by third parties in certain instances in the folder or file name portion of the domain path (www.domainname/folder/filename.htm), why can't the trademark be used in the domain name itself?

Registering, trafficking or using famous or registered trademarks in a domain name without permission or license from the trademark holder is per se unlawful (of course assuming likelihood of confusion and other elements are satisfied).  Other internet uses of trademarks, such as noted above, may be legal.  The answer to the question "What Makes Domain Names So Special?" is found in the language of the ACPA statute its legislative history.

Just like a shoe store can use Nike's trademark in a shoe sale advertisement or display, a third party can sometimes claim fair use of a trademark on a web page or in the domain path to the right of the TLD.  However, a third party can not use 'Nike' in its company name, store name or domain name since these types of uses suggest common ownership, sponsorship or affiliation with Nike, Inc.

For a full and comprehesive analysis of the legislative history behind the ACPA, keep reading below ..   

Trademark Attorneys Specializing In Cybersquatting, Domain Theft, Domain Disputes & On-Line Brand Protection

Our internet law attorneys specialize in cybersquatting and trademark matters including cybersaquatting, domain disputes, domain name theft, WIPO / NAF arbitration, Uniform Domain Name Dispute (UDRP), Anti-Cybersquatting Act Litigation in Federal Courts across the United States. Don't settle for attorneys who think they can 'figure it out.'  Our trademark and domain dispute attorneys have handled some of the highest profile cybersquatting cases for some of the largest companies in the world.     

 

 Managing Partner Enrico Schaefer: "Traverse Legal's internet law attorneys know trademark and cybersquatting law and pride themselves on advanced litigation techniques which are both cost-effective and budget oriented.  From Stolen domain names to mass cybersquatting, we understand the internet, back-end DNS, ISP and hosting issues at a technical level which allows us to focus on results. There are very few firms that can match our ability to get back-end registry level data in order to put your best leverage in play. We understand the Internet and the technology which drives it.  Because we are a boutique litigation law firm, we know how to strategically and efficiently accomplish our client's goals. "

If you have a trademark, domain name dispute, domain theft or cybersquatting issue, you may contact one of our trademark and domain dispute attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Anti-Cybersquatting Consumer Protection Act Update

Our law firm receives a lot of calls from people and companies who have received trademark infringement threat letters under the Anti-Cybersquatting Consumer Protection Act (ACPA) because they registered a domain name identical or similar to a trademark held by someone else.

The Anticybersquatting Consumer Protection Act

Our attorneys specialize in trademark, WIPO / NAF arbitration, Uniform Domain Name Dispute (UDRP), domain monetization, domain protection, cybersquatting and typosquatting matters. Our domain name specialists have a proven track record representing clients on technology and domain name issues. Many of the cases we handle involve federal court litigation against cybersquatters under the ACPA.

What is the ACPA?  The Anti-cybersquatting Consumer Protection Act is a federal law that took affect on November 29, 1999.  This new domain name dispute law is intended to give trademark and service mark owners legal remedies against defendants who obtain domain names "in bad faith" that are identical or confusingly similar to a trademark or service mark.  If a trademark is a famous mark, the same remedies are available if the domain name is identical to, confusingly similar to or dilutive of the trademark.