Welcome to Cybersquatting Law Radio where domain names, 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.
Matt Plessner: Hi and welcome back to Cybersquatting Law Radio. I’m Matt Plessner. Today, we are going to be talking about what it means to cybersquat a personal name and, you know, how such a thing can be prevented as well. Of course to help us with, in joining us today again, is cybersquatting attorney, Brian Hall of the Traverse Legal office in Traverse City, Michigan. Brian, thanks for being here.
Brian Hall: Thanks a lot.
Matt Plessner: Now Brian, for those new listeners out there, can you start off by telling us what it means to cybersquat?
Brian Hall: Sure. So cybersquatting is the registration, use or trafficking in a domain name that incorporates the trademark of another with a bad faith intent to profit. So, that is the definition, and there is a lot of parts to that but to sum it up for our listeners to understand it the easiest. You have to first register and/or use a domain name, it needs to include a trademark or, in some instances, a personal name or other identifying information of another person and you need to do it with a bad faith intent to profit. Meaning you do it in such a way that you’re not doing it to use it for a legitimate business of your own or to commercialize it for something that could be seen as in good faith, but instead doing it in hopes of profiting off of the actual trademark owner or the personal owner of the name it corresponds to.
Matt Plessner: Brian, how is a personal name created differently under cybersquatting laws?
Brian Hall: That’s the key distinction. Under cybersquatting laws we’re looking at, in the United States, at least really two areas of law. The first is the Anticybersquatting Consumer Protection Act, known as the ACPA, and the ACPA requires that the person that issues the Complaint has trademark rights to whatever that domain name corresponds to. So personal names aren’t something that automatically a person can claim trademark rights in. However, if they sell a good or service in connection with their personal name then they might be able to establish a trademark rights so as to be able to establish a claim under the ACPA. And then the second area is what’s known as the UDRP, which is the Uniform Domain Name Dispute Resolution Policy and that, very similar to the ACPA, does also require as a requisite statement for any claim that one establishes trademark rights prior to being able to win a UDRP.
Matt Plessner: Now, let’s talk a little bit about cyber-piracy. First of all, what is cyber-piracy? And also how does cyber-piracy protection for individual statute different from the ACPA?
Brian Hall: Sure. So cyber-piracy is also a term that the government has put on various statutes and that some in the industry still refer to when they are talking about bad faith registration of domain names. More often than not, people are calling it cybersquatting today. However, there is a particular statute. It’s 15 U.S.C. § 8131 and it is called cyberpiracy Prevention for Individuals. And that particular statute is separate from the standard Anticybersquatting Consumer Protection Act statute, which is under 15 U.S.C. § 1125(d), and what the Cyberpiracy Prevention statute allows for is for individuals to recover their domain names that correspond to their personal name if certain factors are met. And the most important factor under the Cyberpiracy Prevention statute is that the domain name registrant has offered to sell domain name corresponding to one’s personal name to that person. So that requirement has to be met in order to recover not only the domain name, but potential damages, attorney’s fees and all those things that go along with it if a lawsuit were to be filed.
Matt Plessner: Are there other options when someone registers the domain name incorporating say my personal name?
Brian Hall: You know there is always other options and what I say is…you know, I always tell clients and prospective clients alike, litigation should always be analyzed but it should also be a last resort. Because there may be an opportunity here to negotiate the sale and purchase of the domain name that corresponds with your personal name and you should at least take the effort to explore whether or not that is possible and then allow the client to make a good business decision and an education decision as to whether or not they want to pay for the domain or maybe they might not even have to pay. Maybe the person that registered the domain truly didn’t know that this was unlawful once a cease and desist letter is sent. They may simply turn over the domain or they may offer it for a price that becomes so attractive that being forced to litigate it either in a federal court or the UDRP, just doesn’t make sense.
Matt Plessner: And finally Brian, what do you recommend to individuals regarding registration of personal names?
Brian Hall: Well, the first thing that, is straight forward, its register the domain name that corresponds with your name. So, you know, it is not always easy if you have a very common name like mine, Brian Hall. It wasn’t easy for me to register my name. However, I did register some variations of it. I registered my name with some different TLDs or top level domains other than the dot-com. So try and register as many domain names as you can that correspond with your name. And it might be your first and middle name, it might be your first and last name, it might be your first, middle and last. You know, who knows. A lot of it really depends on what your name is. The other thing I recommend to individuals, and I probably recommend this now more than ever as a father myself, is if you are going to have babies, if you are going to have children, a good thing to do is to register their domain name or the domain name that corresponds with their name when they are young because it is obviously a piece of property that they are going to want for personal and professional reasons later on in life. So, I think there is no better gift than doing that, you know, at an early stage for any child.
Matt Plessner: Absolutely! Well, Brian, we always enjoy having you here to talk with us and, of course, thank you for giving us some insight on this topic.
Brian Hall: Thanks a lot Matt. Have a good one.
Matt Plessner: This is Matt Plessner and join us next time on Cybersquatting Law Radio.
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.