What is cybersquatting?
It is a question I hear a lot as an internet lawyer protecting trademark interests across the World Wide Web. Today we are speaking with Attorney Brian Hall so we can all better understand what constitutes 'cybersquatting" under the Anti-Cybersquatting Piracy Act (ACPA), commonly referred to as the Anticybersquatting Consumer Protection Act. With statutory damages and attorney fees at stake, you don't ever want to wake up in the morning receiving an ACPA lawsuit from the local process server or a trademark infringement threat letter in your certified mail.
1. Brian: Domain names are sometimes protected as trademarks under the Cybersquatting Act. When does a domain name violate a trademark
2. What is your layman's definition of cybersquatting?
3. OK. Now give me the legal elements of Cybersquatting under the ACPA.
Now that you know what cybersquatting is, you can decide for yourself what domains to keep and which ones to ditch. I you are a victim of cybersquatting, you need to protect your trademark rights. If you have been accused of cybersquatting, you need to make sure you don't say anything which will be used against you later.
Enrico Schaefer: Welcome to Cybersquatting Law Radio. This is your host, Attorney Enrico Schaefer, and today’s show is: “Cybersquatting Definition under the ACPA – The Basics.
What is Cybersquatting? It’s a question I hear a lot as an internet lawyer protecting trademark interests across the World Wide Web.
Today, we are speaking with Attorney Brian A. Hall so we can all better understand what constitutes cybersquatting under the Anticybersquatting Piracy Act (ACPA), commonly referred to as the Anticybersquatting Consumer Protection Act.
With statutory damages and attorney’s fees at stake, you don’t ever want to wake up in the morning receiving an ACPA Lawsuit from a local process server or even a trademark infringement threat letter in your certified mail.
Brian, how are you doing today?
Brian A. Hall: Doing well, excited to talk about this important issue.
Enrico Schaefer: Yeah, it’s really a good one. Domain names are sometimes protected by trademarks under the Cybersquatting Act.
There is a lot of confusion out there as to when is a trademark a trademark, when is a domain name a trademark, and what happens if you register a domain name that is identical or similar to someone else’s trademark.
This intersection on the on the internet between domain names and trademarks has been a sore spot for people since the 90’s. In the late 90’s the United States Congress passed this Anticybersquatting Piracy Act, the ACPA, in order to resolve this fundamental question of whether or not a domain name can be registered, given that someone else has a trademark that is similar or identical.
It’s an area and problem that keeps growing, so today we’re going to try to sort some of that out. Brian, what is your layman’s definition of cybersquatting.
Brian A. Hall: Well, it’s pretty straightforward if someone registers a domain name that incorporates the trademark of another, and has bad faith intent in doing so, then it is cybersquatting.
So, if you own trademark rights, be it common law or registered, and someone comes along and registers, uses or traffics in - and that’s all legal terms of art - if they use, register or traffic in a domain name after you have established trademark rights, it may be cybersquatting under the ACPA.
However, what is important to recognize, Enrico, is that just because someone owns a domain name that is confusingly similar to your trademark, it does not, per se, mean that there is a cybersquatting issue.
It is really important to identify whether or not it does qualify as cybersquatting, and more often than not it does require a cybersquatting attorney to help you determine if the domain name registrant might have legitimate rights, which would be a defense to cybersquatting. Those legitimate rights can come in many ways, shapes and forms.
For example, if they register the domain name before you had trademark rights, then it’s not cybersquatting, more often than not. Also, if they’re using the domain name in a legitimate business or fair use way, it might not be cybersquatting. So, timeframes are very important and how they’re using it is very important, all those things go into a determination of whether or not something does qualify cybersquatting.
Enrico Schaefer: Interesting. So, let me take it from the trademark side.
If I’m a trademark owner, and I see another use of my trademark as a domain name that is close, identical or similar to my trademark, I’m going to want to take a hard look at that because I need to protect my trademarks on the internet.
Because I certainly don’t want someone deceiving my consumers into thinking that some third party is me, which is going to be a big problem for my company’s brand and reputation protection.
The first thing I’m going to do from a trademark point of view is identify whether or not there are other domain names out there that are infringing my mark and there are various ways to search and monitor for that.
Now, if I reverse it and I take a look at it from the domain name registrant side, the person who is registering a domain name. If I take it from that side, I need to be careful about what domain names I register for lots of different reasons.
For example, let’s say I’m a perfectly legitimate businessperson, and I think of a great name for my new company, which is going to be an on-line portal for news and articles about pregnancy. I think of this catchy little name and lo and behold I find a domain name that is available on that, and I go ahead and register. Well, if I get a successful business model going and three years down the line some huge corporation rights me a threat letter saying, your domain name – the one I chose for my web site – is violating their trademark, I may have to shut my web site down, even if I’m tremendously successful.
So, the first thing you want to do as a domain registrant is go out and make sure you’re not violating someone else’s trademark by registering that domain name, before investing all that time and money in your business model under a domain name which may or may not be viable in the long run. So, you need to look out for those things.
And then, of course, there’s the kind of the black hat element out there of cybersquatting where you’ve got people who are intentionally targeting third party trademarks or high-traffic web sites for the specific purpose of diverting that traffic over to them and putting up ad pages and these types of things. So, there’s a lot to think about here, Brian.
What are the legal elements of cybersquatting under the ACPA that I should be aware of if I’m a trademark owner or If I’m a domainer? What is it that someone is going to try and prove in order to establish cybersquatting?
Brian A. Hall: Well, the first thing that everyone needs to understand before looking at all these specific legal elements is there’s this common misconception that just because the domain name is available, someone who registers it, somehow, can have rights to it, and that’s not really true.
While the domain name system is a first-come-first-serve registration basis, if someone does have trademark rights, and that domain name is confusingly similar to those trademarks, and the person registers it with a bad faith intent to profit, that’s cybersquatting.
So, what’s important is that you look specifically at the ACPA, which is codified in what is known as the Lanham Act. The Lanham Act, which can be found at 15 U.S.C. 1125(d), is the statute that governs what is and is not cybersquatting.
What the Act basically says is that a person is liable for cybersquatting where they register, traffic in, or uses a domain name that is confusingly similar to a distinctive or famous trademark of another, and have a bad faith intent to profit from that registration, trafficking or use.
So, it sounds like a mouthful, Enrico, but when you break it down, it is four simple elements. The first is that the trademark owner must own a distinctive or famous mark. And there is all kinds of analysis that goes into that, but the safe rule of thumb, if it’s a brand that you can find online or it’s a registered trademark. More often than not, the person is going to have sufficient rights to satisfy that first element.
The second element is that the domain name, either registered or if a domainer is looking to register it, must be confusingly similar to the mark. And obviously this is a subjective test, but the reality is if there’s a slight variation, or if someone adds the generic word “the,” or some other word, or makes it plural versus singular, those minor differences are usually insufficient to avoid a confusingly similar finding. There’s even terms of art out there that a lot of attorneys and courts have coined when looking at that issue, such as typosquatting. A common example of that is Microsoft.com, if somebody registers Microsoft and adds and ‘s’ to it, or somebody registers Microsoft and replaces the ‘o’ with an ‘a’, that is probably typosquatting and actionable under the ACPA.
So, the first two elements are ownership of a distinctive or famous mark and the domain name being confusingly similar. The second two elements are that the domain must be registered, used or trafficking in. And what that means is exactly what those words say. Registration is the moment somebody registers a domain and is the domain name registrant. Use can be either the person that’s using the web site by putting up a web site at the domain name or someone else. And finally, trafficking in is simply a way of saying they’re trying to sell the domain name and profit from it.
And the final element, Enrico, which is really the largest element under the ACPA is having a bad faith intent to profit. And what the ACPA does is it provides a list of nonexclusive factors to help determine if there is, indeed, a bad faith intent to profit. And there’s, I believe, nine of ten enumerated within the statute, such as whether or not the person offered to sell the domain name for financial gain, what other domain names they might have in their domain portfolio, all those types of things will be analyzed to determine whether or not somebody has the requisite bad faith intent to profit so as to be deemed a cybersquatter.
Enrico Schaefer: Interesting. We hear it all the time, you know, this concept that Go Daddy let me register the domain. When people go to register a domain, they actually verify for Go Daddy that they’ve done due diligence and that they are not violating third party trademark rights. So, it’s the obligation of the person who’s registering the domain to make sure, they’re not violating third party trademarks.
So, for the audience, now you know what cybersquatting is and you can decide for yourself what domains that you want to keep and which ones you need to ditch. If you’re a victim of cybersquatting, you need to protect your trademark rights. It’s move it or lose it time. If you’ve been accused of cybersquatting, you need to make sure you don’t say anything or do anything which will make the matter worse. Under either scenario, contacting a cybersquatting attorney for a consultation is a great idea. Thanks for being with us today, Brian.
Brian A. Hall: Thanks a lot, Enrico.