When you file a WIPO or NAF UDRP proceeding, you need to make sure you know what you're doing as the trademark holder or complainant. Just because you want a domain which someone won't sell to you, does not mean you can file a Uniform Domain-Name Dispute-Resolution Policy (UDRP) arbitration to seek a forceful transfer of that domain name to your possession from the registrar.
If you allege cybersquatting, and a UDRP panelist or panelists determine that you have engaged in reverse domain name hijacking
, you may end up with more than egg on your face. Rest assured, bloggers on the internet will pick up the decision and essentially call you bad names and laugh at you. This will not be good for that trademark and brand you're trying to protect. But it could get worse under the Anticybersquatting Consumer Protection Act
(ACPA) if you choose to file a cybersquatting lawsuit against a domain owner. There are examples of cases where the defendant has won up to $100,000 as a penalty based on a finding that the plaintiff/complainant attempted to engage in reverse domain domain name hijacking. Reverse domain name hijacking occurs when your cybersquatting allegations are frivolous and it should have been clear to your cybersquatting attorney that no claim existed. Essentially, it is trying to use the leverage of the legal system or the UDRP against a legitimate domain owner in order to force a transfer of the domain for free. There are many generic and descriptive domain names out there which do not have trademark issues. There are instances where people register domain names long before you or your business had trademark rights.
All too often, we see trademark infringement attorneys who don't understand the ACPA or UDRP filing federal court lawsuits or UDRP arbitrations with WIPO or NAF without fully understanding the law.
And just to remind some that there are even harsher penalties than the $100k. Public shame!
Posted by: Rick Schwartz | 2013.02.13 at 11:11 AM