A Recourse Against Cybersquatting

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When others register domain names related to your trademarks, service marks, product names, and other intellectual property, you have a problem. These cybersquatters can damage your business. At best, their use of similar domain names might cause confusion. At worst, they could be used to sell knock-off or counterfeit goods and services and can seriously hurt sales and your business’s reputation.

You can force cybersquatters to give up names that may hurt your business through the International Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution process. The process is relatively quick and cheap, at least compared to going to court.

The Uniform Dispute Resolution process is an e-mail based arbitration process. Cybersquatting Everyone that registers a domain name ending “.com,” “.net,” or “.org” with ICANN agrees, as part of their registration, to submit to this process if there is ever a dispute over the name that they registered. The process has also been adopted by many of the country-specific domain name managers, such as “.tv.”

To use the process to evict a squatter, you file a complaint and pay a fee. If you have multiple disputes over domain names with the squatter, you may petition the Administrative Panel to consolidate the actions into a single dispute. This can make it much easier to prepare your complaint.

The complaint must show that the domain name is the same or confusingly similar to a trademark or service mark that you have rights to. Of course, it is important that you have the trademark rights. But with the trademark rights, this is usually easy to show.

You must also show that the csquatter has no rights or legitimate interest in the domain name. Usually the cybersquatter has just registered the name to make a quick buck off its similarity to your mark, and so has no legitimate interest. However, occasionally legitimate businesses are legally using a mark such as a personal name or a business name similar to yours, but in a different trademark class and category. In these cases you might not prevail. I would recommend that you discuss this type of situation with an attorney.

Finally you must show that the name is being used in bad faith. Examples of bad faith include displaying confusingly similar products or services, downloading viruses, providing advertising for competing products, or displaying offensive material – usually to encourage you to buy the domain name from the squatter.

After you file the complaint, the cybersquatters have the opportunity to respond. Often the cybersquatters do not answer your complaint. Instead they just move on, and you win. If the squatter does respond, they will try to show that they are offering bona fide goods or services under a name they have used for business, or that they are making legitimate non-commercial use of the domain name without trying to mislead your customers or to detract from or tarnish your public image.

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