Domain name squatting is unlawful under both the Uniform Domain Name Dispute Resolution Policy, or UDRP, as well as the Anti-Cybersquatting Consumer Protection Act, known as the ACPA. And domain name squatting has serious consequences. Because it is a form of trademark infringement, an attorney will advise you that if you receive a threat letter accusing you of domain name squatting, that you potentially could be liable for a lot of money in damages. You certainly don't want the people who are sending you the threat letter on behalf of the trademark owner or their attorneys to file a lawsuit against you in federal court claiming that you are engaged in domain name squatting or cybersquatting.
Welcome to Cybersquatting Law Radio where domain name, cybersquatting, and trademark domain name issues are always the hottest topic of discussion. Whether you are a trademark owner who believes they are a victim of cybersquatting or a domain owner wrongly accused of trademark infringement, you will find all the tips you need to protect your rights right here.
Domain name squatting is essentially registering a domain name which infringes a third party's trademark rights. So think about a domain name as the identifier above the store, the store name. People tend to think that when they look at a domain name, that it is, in fact, a trademark that identifies who's operating that website, who's operating the store. There are exceptions to this when the domain name is purely generic, and in some instances purely descriptive, such as cars.com might be a domain name which has all kinds of information about buying and selling cars, but you might not think that that's actually the name of the company that's operating the website, although in some instances it may be.
So here's what you need to understand. When you go to register a domain name, if it's a dictionary word, then you have to typically make sure that there are no other trademark owners out there using that dictionary word in a non-dictionary way. Apple is the best example of that. Just because apple is a fruit doesn't mean it can't be a trademark for, say, a computer company. So if you have a generic or descriptive word, you're going to be typically safe if you use that in its descriptive or dictionary sense. But if you use it outside of that dictionary sense, then you may be infringing on a third party trademark. If you have a non-dictionary word, then you need to make sure that no one else has thought of using that non-dictionary word as a trademark, so that you don't get accused by a threat letter of trademark infringement and domain name cybersquatting. So these are important concepts.
The other thing that I hear all the time which I'm constantly correcting prospective clients on is that trademarks protect more than the literal spelling of the trademark or the literal use of the trademark. Trademarks protect around the word. That means that if someone's got a trademark for something that is similar to the domain name that you look to register, you might have a problem with cybersquatting or domain name squatting because it is too similar, because the average consumer might be confused and think that your domain, which is typographically or phonetically similar to someone else's trademark, is really the other company.
So, let's just take an example, Zappos. Zappos is a famous trademark. It's not a dictionary word. What if you were to go ahead and register a domain name that was Bappos or Dappos or Mappos or Pappos? The question would become even though there's a difference in spelling, even though there's a difference between your domain name and the third party trademark, whether or not a consumer might think that your domain name was in some way sponsored or associated with the Zappos trademark. And there are many instances of domain name squatting under the UDRP and ACPA where the trademark owner has a particular spelling, and they're alleging squatting and cybersquatting against someone who's got a domain name which is typographically or phonetically similar but not identical.
So, in order to avoid being the target of a threat letter claiming that you are engaged in domain name cybersquatting, you need to make sure that you take a look around and ensure that you're not registering a domain name that's similar to someone else's trademark. If it is similar, that you are not using it in a way that might cause confusion to consumers between the trademark owner's company and what you are doing. My name is cybersquatting attorney, Enrico Schaefer. We'll see you 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.
Thanks a lot for this very useful and professional look at potential TM infringements.
Not long ago a company accused me of TM infringement and demanded that I transferred the domain over to them. It's a common dictionary term. The domain was parked at Sedo and some of the displayed adds were related to the industry of the TM's owner (when I park a domain with them I have no say regarding the types of industries Sedo's adds relate to). Is this a TM infringement?
Posted by: Jack | 2012.07.26 at 02:43 PM