Any domain name law attorney is regularly faced with the question from prospective and existing clients alike: “How can I get the domain name that matches my trademark?” Some assume that they are automatically entitled to it, while others recognize that domain name law requires several things before one can alleged or pursue a cybersquatting matter. Since domain names rights are on a first come, first serve basis, only in the event that the trademark owner can establish trademark rights and a bad faith intent to register, use or traffic in the domain name that they wish to own would a cybersquatting cause of action apply. Therefore, an experienced domain name attorney will be able to answer the question only after analyzing both your trademark rights and the domain name registration and use in order to determine whether or not the requisite bad faith intent exists.
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The Lanham Act (title 15, chapter 22 of the United States Code) was amended in 1999 to provide protection of domain names as trademarks. The Lanham Act provides relief for a variety of trademark issues such as trademark infringement, trademark dilution, and false advertising. The The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), prohibits registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. Read more information about the Lanham Act and the ACPA below.
If you are looking to obtain a domain name that matches your trademark, you have to ask yourself several questions. The first is whether or not the person who has the domain name is intentionally violating your trademark. If the person owned the domain name before you established trademark rights, or achieved the level of fame where they might know you exist, then you are going to have to purchase the domain name from them. If the person registered the domain name in order to divert traffic because of your trademark, then they may be a cybersquatter.
For domain names that are registered in violation of either the Uniform Domain Name Resolution Policy (UDRP) or the Anti-Cybersquatting Consumer Protection Act (ACPA), you have a couple different options. You can file a UDRP arbitration or to seek a transfer of the domain name to your control. Under the ACPA, you could potentially file a lawsuit or send a threat letter arguing the person violated the statute and should transfer the domain name to you. Under the ACPA, you could potentially obtain attorney's fees and damages for trademark infringement. Under the UDRP you are limited to a transfer of the domain name to your control.
You should not be sending out any threat letters alledging trademark violations unless you have thouroughly analyzed the history of the domain name using the WhoIs Database. Even then, it requires a level of sophistication to determine if the person has held the domain name for a long time and thus predates your trademark rights. You should contact a cybersquatting or domain name lawyer in order to better understand your options and rights. You don't want to send a threat letter alledging trademark violation if you are ultimately going to have to purchase the domain at fair market value. Sometimes you have to decided whether or not you are going to lead with cookies and ice cream rather than blunt force trauma.
If you register a domain name incorporating someone else's trademark in bad faith, you could be liable for much more than trademark infringement under the Lanham Act.
In this Cybersquatting Law Radio Interview, Attorney John Di Giacomo discusses the passive holding of domain names and how it relates to bad faith registration, trademark infringement, cybersquatting and ways in which you can limit your risk.
Welcome to Cybersquatting Law Radio brought to you by Traverse Cybersquatting Law, internet lawyers specializing in domain name dispute resolutions and all other domaining issues.
Damien Allen: Good morning, and welcome to Cybersquatting Law Radio. My name is Damien Allen, and joining me today on the telephone is John Di Giacomo of Traverse Legal, PLC. Good morning and welcome to the program, John.
John Di Giacomo: Hi, Damien. Thanks for having me.
In this Traverse Cybersquatting Law Radio interview, Attorney John Di Giacomo discuses cybersquatting on celebrity names, also known as celebrity cybersquatting. John explains the different methods domainers use in order to profit from the bad faith registration and use of domain names containing celebrity names. Listen or read the complete transcript below:
Welcome to Cybersquatting Law Radio brought to you by Traverse Cybersquatting Law, internet lawyers specializing in domain name disputes, resolutions, and all other domaining issues.
Damien Allen: Good afternoon, and welcome to Cybersquatting Law Radio. My name is Damien Allen, and joining me today on the telephone is John Di Giacomo, attorney with Traverse Legal, PLC. Good afternoon, and welcome to the program, John.
John Di Giacomo: Hey Damien, thanks for having me.
Understand Your Trademark Rights George Bush! Avoid Overpaying $35,000 to Get Your Domain Back From A Cybersquatter
Cybersquatting creates risks under tghe UDRP, Anti Cybersquatting Piracy Act and for trademark infringement under the Lanham Act.
Repeat after me everybody. Personal and Proper Names Are Protected Under Cybersquatting Act And the Lanham Act. Here is story that makes you think you ought do a Google search for the word 'cybersquatting attorney' or 'domain name lawyer' before shelling out big cash to pay for a domain name which incorporates your personal name or trademark.
Illuminati Karate paid less than $10 for the www.GeorgeWBushLibrary.com domain name – and sold it back for $35,000 to the library's contracted Web developers, Yuma Solutions, who had accidentally let it expire. Illuminati Karate recognized what the library obviously knew as well – that anything else, like www.GWBPresidentialLibrary .com, would have been cumbersome and less than ideal.
"It worked out very well," said George Huger, lead Web developer for Illuminati Karate in Raleigh, N.C. Mark Mills, owner of Yuma Solutions, could not be reached for comment.
The real head-scratcher here is that Yuma Solutions didn't have to pay anything to get the domain back from Illuminati Karate, who was clearly cybersquatting on the domain and trademark rights of the library and George Bush personally. We posted about this previously at Cybersquatting On The George Bush Library Name. Didn't they consult and trademark attorney or cybersquatting laywer first? Of course, they still may have their $100,000 in statutory damages under the ACPA and Lanham Act to leverage if they did not sign a global release. The domain sale simply proves bad faith under both statutes.
Before you sue someone for trademark infringement under the Lanham Act or Anticybersquatting Piracy Act, you better make sure you've been protecting your rights all along.
In a case recently decided in the United States District Court for the Southern District of Florida, Miami Division, a court again lent credibility to the argument that a trademark owner’s failure to timely protect its trademark rights can result in a waiver of those rights altogether. In Southern Grouts & Mortars, Inc. vs. 3M Company , Plaintiff Southern Grouts & Mortars sued Defendant 3M under the Lanham Act and the Anticybersquatting Consumer Protection Act over its “DIAMOND BRITE” registered trademark. 3M registered an allegedly infringing domain name www.diamondbrite.com which was the primary driver for the trademark infringement lawsuit.
We have previously blogged about the phenomena of cybersquatting on the personal names of famous people, including politicians. Political Candidate Cybersquatting: Hillary Clinton's Name Most Squatted
Republican Vice Presidential Candidate Sarah Palin is relatively new to the scene. We thought we’d take a look and see how long it took before her fame was reflected in the number of cybersquatters trying to cash in on her new political status. Here is a domain typo report provided by Domain Tools.
eBoost Media and eBoost Consulting are both search engine optimization companies that operate out of California. Same field, same business, very similar names, even similar addresses. Now that one company is at the center of a viral internet story about the worst customer service ever, the other company is distraught and doing damage control.
Despite all the negative attention, “eBoost Consulting is guilty of nothing more than being careless about defending its trademark.” (source)
Some companies take laxed view of cybersquatted domains, including typosquatters who are in clear violation of the UDRP and ACPA. To often, a trademark holder analyzes the matter purely in terms of traffic. They assume, wrongly in some instances, that a typosquatted domain isn’t generating much traffic anyway. They may not understand direct navigation or fail to employ the analytic tools available in order to measure traffic being diverted from their trademark protected websites.
The Anticybersquatting Piracy Act is part of the Federal Lanham Act, designed specifically to protect domain names as trademarks. Trademark right owners have tremendous leverage against cybersquatters if they monitor the internet and enforce their rights as appropriate. Sometimes, a trademark lawyer is not enough. You need an attorney who specializes in cybersquatting and internet law issues.
In this article about cybersquatting and domain name theft, the author correctly notes that (1). cybersquatting is easy and it's cheap; (2). cybersquatters can undermine your reputation. (3). You can fight back against cybersquatting and retrieve stolen domain names. Companies are becoming more aware of web sites which pirate their brand and traffic and becoming more serious about prtoecting their trademarks, brands and web presence.
Cybersquatters: What you should know and how to fight cybersquatting.
I can no longer imagine a world without the Internet. I love it. But, let's be real. There's no shortage of bottom-feeders on the Internet.
Cybersquatters: The dictionary defines cybersquatting as "the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit.
But the term is commonly used when referring to bad faith domain registrations in general.
Our lawyers are always amazed by articles such as the one in the Dallas Morning News, which highlights all of the people who have registered variations of George Bush's name, and the name of his library. There has been a lot of commentary recently about cybersquatting on politician names. Many of the uses noted below arguably meet the definition of unlawful cybersquatting under both the UDRP and ACPA. But no one quoted in the article seems to be aware that the registration of domains incorporating famous names such as George Bush is unlawful, subjecting them to damages in excess of $100,000.00
Bush library searches for Web site name 1:45 PM CT | Dallas Morning News | News for Dallas, Texas | Headline | National and International News
So you are the owner of a domain name. You use the domain name in conjunction with your business. You have done so for years now. Unfortunately, you inadvertently let your domain name lapse. When you realize what you have done, it is too late. Another registrant has registered what was once your domain name. You no longer can offer your products and services at the website once housed at that domain name. Even worse, the domain name is now being used by the new registrant to provide links to other websites. What do you do?
There are a few simple steps you can take to make sure that you secure your new company domain:
- Register your trademarks with the US Trademark office,
- Register any typo names to be safe,
- Consider using a trademark watch service that will alert you of potential violations,
- Always enforce your trademarks online and off line,
- Understand the Anticybersquatting Piracy Act and the Lanham Act in order to understand your trademark right options,
- Get the help of a experienced attorney that is familiar with Trademarks, the UPTSO, ACPA and experienced in responding quickly to violators no matter where they are in the world.
The Lanham Act has protected trademarks in the United States for a very long time. Our domain name attorneys often receive questions from clients about personal name protection in cyberspace. The Wikipedia definition of 'personal name' states "A personal name is the proper name identifying an individual person. It is nearly universal for a human person to have a name." And yes, personal names are specifically protected from cybersquatting under the Anti-Cybersquatting Consumer Protection Act (ACPA).
If you have a trademark or cybersquatting issue you may contact one of our trademark and cybersquatting attorneys for a free evaluation or call 866.936.7447 (International Toll Free).
Salle v. Meadows, 2007 U.S. Dist. LEXIS 92343 (UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA, ORLANDO DIVISION). Domain registrant attempted to sell a domain subject to Plaintiff's trademark for an inflated price. The Court held that that inflating a domain name price in an attempt to sell it to the person whose name was registered will not defeat a bad faith argument.
This case arose under the Anti-Cybersquatting provisions of the Lanham Act, specifically 15 U.S.C. §§ 1125 (d) and 1129(1)(A). First, Plaintiff sought relief under, 15 U.S.C. § 1129, which states that:
Any person 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, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.
Trademark registration of domain names has become more common as internet-based commerce continues to grow. A recent search of the trademark database revealed over 3,000 marks registered, or attempted to be registered, using a domain name as the mark itself. We are often asked whether it is important to register a domain name as a trademark (i.e. registering www. mycompany.com as a mark). Without question, domain names have become valuable property. However, trademark law protects brands, not words. This trademark examination guide from the USPTO provides some further insight which will help registrants decide whether they should attempt to register their domain as a trademark, thereby gaining valuable presumptions and leverage through the Lanham Act and Cybersquatting provisions.