Cybersquatting occurs when a domain name is identical or confusingly similar to a third party owned trademark or personal name and - this is critical - is registered with a bad faith intent to profit from the trademark owner.
Is a UDRP or URS Proceeding an option?
Having your attorney send a cybersquatting threat letter to a domain name WHOIS privacy or proxy email address can often fall on deaf ears. With GDPR, you can't see who the registrant email belongs to, or who registered the domain name. A URS or UDRP proceeding (See this link to understand the difference) is often the most cost-effective way to force a transfer of a domain name to the trademark owner.
What about an ACPA lawsuit?
If a UDRP won't work for you situation, you will need to bring a lawsuit under the ACPA.
A bad faith intent under the ACPA statute is determined by various bad faith factors such as, but not limited to:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section.
15 U.S.C.A. § 1125 (West)
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