The first way is, under United States law, the Anti-Cybersquatting Consumer Protection Act, also known as the ACPA, allows for somebody to file a complaint, and if they can successfully establish that they have trademark rights in a domain name, and that it was registered or used in bad faith, with an intent to profit, then they can get the domain transferred to them and also get statutory damages up to $100,000 per domain name.
Besides that ACPA legislation, there is also what's known as the UDRP, or Uniform Dispute Resolution Process. Which is an arbitration that allows somebody to file complaint and have an arbitration panel decide, usually within a 30- to 60-day time frame, whether or not the domain should be transferred to the person that filed the complaint.
Usually what happens is one of those two things has occurred, either they have filed a UDRP or they have filed a ACPA law suit. What the defendant or the domain name user registrant or user says is, "I have legitimate rights in this domain, I'm not cybersquatting, and what you're trying to do constitutes reverse domain name hijacking."
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Matt: Hi! It's Matt Plessner for Cybersquatting Law Radio, and we're going to be talking about reverse domain hijacking today, what that means and what it encompasses. To help us out, we're speaking today with Brian Hall, attorney at law from the Traverse Legal office. Brian, how are you?
Brian: I'm doing well, Matt. How are you?
Matt: I'm doing very well. Thank you very much. Now can you please tell us what exactly is domain hijacking?
Brian: When we're talking about reverse domain name hijacking, we're really talking about somebody that uses cybersquatting law to come after a domain name that's registered and/or used by someone else. There are really a couple ways that they can go about doing that.
The first way is, under United States law, the Anti-Cybersquatting Consumer Protection Act, also known as the ACPA, allows for somebody to file a complaint, and if they can successfully establish that they have trademark rights in a domain name, and that it was registered or used in bad faith, with an intent to profit, then they can get the domain transferred to them and also get statutory damages up to $100,000 per domain name.
Besides that ACPA legislation, there is also what's known as the UDRP, or Uniform Dispute Resolution Process. Which is an arbitration that allows somebody to file complaint and have an arbitration panel decide, usually within a 30- to 60-day time frame, whether or not the domain should be transferred to the person that filed the complaint.
Usually what happens is one of those two things has occurred, either they have filed a UDRP or they have filed a ACPA law suit. What the defendant or the domain name user registrant or user says is, "I have legitimate rights in this domain, I'm not cybersquatting, and what you're trying to do constitutes reverse domain name hijacking.'
Matt: Now, Brian, how do you know if it's a legitimate claim for cybersquatting, or just a frivolous attempt at a reverse domain hijacking?
Brian: That's a good question, Matt. Really, domain name attorneys are the ones who can advise people who are subject to claims of cybersquatting. At its highest level, there are different kinds of uses of a domain name that can be legitimate or valid, and not cybersquatting. Those could be if you register a domain name and intend to use it in a fair way, that doesn't intend to profit upon the trademark rights that the brand owner is trying to assert. Also, if you are the first to register a domain name before somebody even acquired trademark rights in the corresponding name, you'd likely have a legitimate defense to a claim of cybersquatting. At the end of the day, you really need to go back to the elements that a plaintiff must establish for a cybersquatting claim, and if they can meet those, and "those" being whether or not they have trademark rights, whether or not your use of it is legitimate or not, and whether or not your use is in bad faith intent to profit, if they can establish all of those, then it's likely a legitimate claim for cybersquatting. If they cannot and you have other defenses available, then truly it could be a frivolous attempt by them to try and extort the domain name from you, under the guise of cybersquatting.
Matt: Can you tell us a bit about what the options are, for a victim of reverse domain hijacking?
Brian: Yes, definitely. Unfortunately at this point in time, it's still a developing area of law. What I mean by that is, if somebody files a UDRP complaint against you, you can respond to that UDRP complaint, setting forth your defenses. And ultimately ask that the panel find that this is a case of reverse domain hijacking. All that really means is that you get a written opinion that on paper says reverse domain hijacking has occurred and you get to keep the domain. But you don't get to recover any of the expenses you paid to, let's say, a domain name attorney who helped you draft a response or any of the resources that you put in to having to fight off this person who's claiming cybersquatting.
Fortunately, the Anti-Cybersquatting Consumer Protection Act, or the ACPA, actually has provisions that allows somebody to not only respond to a complaint for cybersquatting and say that they have legitimate rights to the domain name, but also seek injunctive relief, if in fact a UDRP that the domain should be transferred and you believe that it shouldn't. Not only can they stop the domain from being transferred, but they can also seek damages and recovery of their attorney fees in the event that they have to defend against a cybersquatting action, that's ultimately helped to constitute reverse domain hijacking.
Matt: Brian, what are the possible outcomes of reverse domain hijacking?
Brian: There are several. The slam-dunk outcome for any domain name registrant or user, is that the domain does not get transferred. That's the first thing that they always try and accomplish. Beyond that, if they are able to get a ruling that it is, indeed, reverse domain hijacking, they can get those things that I just talked about. Like recovery of damages for the amount of resources and money that you had to spend to defend the action. There could be recovery of attorney's fees and costs, which could include expert testimony and things along those lines. If you're able to successfully keep the domain name and have a finding of reverse domain hijacking, there is real money now that can be changing hands that in the past typically wasn't happening.
Matt: Well thank you very much, Brian. One final question for you. If somebody receives a cybersquatting complaint, what should they do?
Brian: Obviously I'm biased, and the first thing I'd say is, "Contact a domain name attorney." Obviously domain name lawyers are in the best position to determine whether or not it's a valid or legitimate cybersquatting claim, or if in fact it is a frivolous attempt at reverse domain hijacking. So, I'd first contact a domain name attorney. Once you do that, you'll be able to get the advice you need, as to whether or not in fact you could be in a position to not only keep your domain, but also seek that reverse domain hijacking finding, either under the UDRP or the ACPA. And ultimately potentially go after the attorney's fees, costs and maybe damages you have incurred as a result of the cybersquatting complaint that's been filed against you.
Matt: Well, Brian, thank you very much for enlightening us on the subject of reverse domain hijacking. We appreciate you being with us today.
Brian: Thanks a lot, Matt.
Matt: This is Matt Plessner for Cybersquatting Law Radio. Join us next time.
You’ve been listening to Cybersquatting Law Radio. Whether you are filing or defending a claim of cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) or Anticybersquatting Consumer Protection Act (ACPA), we have a cybersquatting and domain dispute attorney ready to answer your questions.
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