So, you've been accused of cybersquatting under the Anticybersquatting Consumer Protection Act. You've received a trademark infringement and cybersquatting threat letter from a trademark owner saying that you've engaged in bad faith cybersquatting. The trademark owner has a registered trademark dully filed with the United States Patent and Trademark Office and it's been registered since 2002.
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.
So, you've been accused of cybersquatting under the Anticybersquatting Consumer Protection Act. You've received a trademark infringement and cybersquatting threat letter from a trademark owner saying that you've engaged in bad faith cybersquatting. The trademark owner has a registered trademark dully filed with the United States Patent and Trademark Office and it's been registered since 2002.
You registered your domain name in 2006. The threat letter that you received not only demands that you turn over the domain name to the trademark owner within 10 days. But it indicates that you are liable under the Anticybersquatting Consumer Protection Act known as the ACPA, and that they are contemplating filing an ACPA lawsuit naming you as a defendant and claiming $100,000 in statutory damages plus attorney's fees because they believe you have engaged in bad faith cybersquatting.
So, what do you do if you've been accused of being a cybersquatter? What if an attorney is threatening to file a federal court lawsuit against you under the ACPA seeking statutory damages and attorney's fees. My name is Cybersquatting Law Attorney Enrico Schaefer. My law firm has tried as many law suits under the Anticybersquatting Consumer Protection Act in front of juries as perhaps any other law firm in the country.
If you have been accused of violating the ACPA and you're being threatened with statutory damages of up to $100,000 per domain name under the ACPA, you need to take that threat letter seriously. While many trademark owners simply turn off the spigot once you turn over the domain name. That is not always the case.
So, the first thing that I tell domain name owners who've been accused of being a cybersquatter is, when you receive that threat letter, if you're actually contemplating turning over the domain name, you need to be very careful about what you say in that first correspondence or email back to the attorney who has sent the threat letter. Because that response is most often exhibit A in proving that you, in fact, are cybersquatting.
Many domainers think, "Well, I'm just going to deny the claim and I'm going to prove that I'm not a cybersquatter. I'm going to respond to that threat letter, but then I'll go ahead and offer to turn over the domain name. Or I'll ask the trademark owner to pay me just couple of thousand dollars to turn over the domain name."
As a cybersquatting law attorney, I have to tell you there is a very large risk in communicating to an attorney who has sent you a trademark infringement cybersquatting threat letter without first speaking to an attorney who really understands the ACPA, the UDRP, and cybersquatting trademark law.
More often than not, that first correspondence back or the third correspondence back as you're emailing back and forth furiously defending your position, those are the stuff that liability is made of. Those are the types of email correspondence that become the primary exhibits in the case. You have to be very careful what you say. I've got news for you - not every trademark owner goes away when you turn over the domain. In fact, some trademark owners will actually pay you that couple of thousand dollars you ask for, and then turn around and sue you in federal court under the ACPA.
Get the help of a qualified trademark attorney to respond on your behalf and make sure they understand the Anticybersquatting Consumer Protection Act so that they don't say something that's really stupid and increases, rather than defeats liability.
In some instances, you may have serious problem. You need to make sure that whatever you decide to do with that domain, whether it's turn it over, lead it, or what-have-you, that you get a full settlement and release in exchange for what it is you're doing for the trademark owner.
Just because you turn over the domain name, the issue is not necessarily resolved. Unless the trademark owner releases all legal claims against you with regards to your registration use and trafficking in that domain name, they can turn around and sue you later. There are some companies that have been extremely aggressive against people that they believe are cybersquatters or engaged in cybersquatting.
So, you need to take it seriously. So many domainers actually just take the kind of cavalier position that they'll fire off a couple of response emails. They'll demand a couple thousand dollars in money, which will be less than what it would cost for UDRP proceeding for the trademark owner, and they'll simply cavalierly walk through process.
That can work. It does work out in many instances. But I have certainly represented my fair share of domainer clients, who ended up going up against a company that decided that turning over the domain name was not good enough, that the email communications actually established cybersquatting under the ACPA and the bad faith intent element that's necessary to get to statutory damages.
So be very careful. If you do end up getting sued in federal court or in state court for trademark infringement cybersquatting, obviously the stakes just got a lot higher. You should understand that there is very little chance that that case will go away for less than tens of thousands of dollars in settlement. And of course your attorney's fees and costs on top of it, which will certainly be tens of thousands of dollars in the first couple of months, if not hundreds of thousands of dollars over the long term.
So, these cases can end up costing you a lot of money. Because the ACPA provides for that penalty statutory provision of a $100,000 per domain name, the stakes are immediately high if you have a problem with cybersquatting.
So, get a good attorney to help defend you early. Avoid ACPA litigation under all scenarios. Obtain a settlement and release if you should be approached by threat letter in exchange for turning over the domain if you intend to do that, and stay out of court at all costs if you possibly can. If you come against an aggressive trademark owner who takes you to court, you need to make sure that you're prepared to deal with the time and expenses it's going to take you to defend that.
Of course, as a domainer, you have an obligation as part of your business model to understand exactly how the ACPA works, and the UDRP works, and how they work together. I cannot tell you how many domainers that I've spoken to who make some wild claims about what the ACPA statute does and how it works and how the UDRP works. They're just wrong. They listen to all the other domainers and some of the other lawyers who want to talk about what they should be, as opposed to what the law really is.
We just concluded a lawsuit where the defendant had registered over 270 typographical variations of our client's famous and incontestable trademarks. Their defense literally was, "Well, the software is really what registered the domain names, so there can't be bad faith under the ACPA." There are domain name attorneys out there who actually tell people that that's a defense. It's not a defense. What those attorneys are saying is that they think it should be a defense. But you have to understand, convincing a court of something as absurd as that is rarely going to fly.
Use your common sense. Take off your domainer hat. Deal with the reality of the situation. This is part of your business model domaining. Make sure you understand how the law really works and how to properly defend yourself if you should encounter a threat letter or claim of cybersquatting being asserted against you. My name is Cybersquatting Law 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.
Comments