MEMBER NOTES
Tools for Combating Cybersquatting
By Kate Sherlock , Esq . Partner Archer & Greiner , P . C .
Cybersquatting is the practice of registering , trafficking in , and / or using an Internet domain name with a bad faith intent to profit from the goodwill of a trademark belonging to someone else . Have you ever encountered a domain name that is identical or similar to your trademark ? If so , you may have been the victim of cybersquatting .
Cybersquatting comes in different forms . There is typo-squatting or domain spoofing , where a bad actor registers a domain name with a slight change or typo ( think gooogle . com vs . google . com ). Often , these bad actors advertise similar services and profit from third-party links on their site , or worse , they copy copyrighted content from the legitimate website to trick visitors into purchasing goods or services from their fraudulent site and / or submitting personal information as part of a larger scam .
Cybersquatters may also register variations of well-known trademarks in an effort to sell the domain variations back to the trademark owner at a high mark-up . Cybersquatters often register domains through a proxy service to protect their identity , which makes contacting them directly to resolve the matter more difficult .
What can a business do if it discovers a cybersquatter attempting to profit from the business ’ s goodwill in its brand ? The Uniform Domain-Name Dispute Resolution Policy (“ UDRP ”) provides trademark owners with a cost-effective , quick method for obtaining relief from cybersquatting .
Under the UDRP , the owner of a trademark ( either a registered mark or a common law trademark ) can seek to cancel or gain control of infringing domains by filing a complaint in a private arbitration proceeding , even if the cybersquatter is located outside of the United States and / or cannot be identified . All registrars who control the registration of domain names , such as GoDaddy and Network Solutions , are subject to the UDRP , which is why it is such a powerful and efficient tool to combat cybersquatting and protect trademark owners ’ rights .
To seek relief under the UDRP , a trademark owner must first file a complaint with
Cybersquatting is more common than you may think . The Uniform Domain-Name Dispute Resolution Policy (“ UDRP ”) provides trademark owners with a cost-effective , quick method for obtaining relief from cybersquatting .
Photo : Getty Images / iStockphoto / frankpeters a recognized UDRP service provider , such as the Forum or the World Intellectual Property Organization (“ WIPO ”). The trademark owner ( the “ Complainant ”) must demonstrate that the disputed domain is identical or confusingly similar to the Complainant ’ s trademark or service mark , that the registrant of the disputed domain has no legitimate interest or rights in the disputed domain , and that the registrant registered the disputed domain in bad faith . If the Complainant ’ s trademark is unregistered , the Complainant must set forth additional supporting facts surrounding its trademark use , including duration , sales information , advertising , and customer recognition .
Once a UDRP complaint is filed , the registrar responsible for the disputed domain is notified and is required to notify the registrant of the dispute concerning the domain . At that point , the registrant may file an answer in response to the complaint . Often , the registrant does not respond .
Once an answer is filed or the deadline to file an answer passes , the dispute resolution provider , either the Forum or WIPO , assigns the case to a single or a three-person administrative panel to consider the filed papers . If the panel finds that the Complainant met its burden by establishing the three elements discussed above , the panel issues a decision in the Complainant ’ s favor and the registrar must , at Complainant ’ s option , either cancel the disputed domain or transfer it to the Complainant . Transferring the domain is the preferred option because it prevents the domain from being registered by another bad actor in the future . If the panel decides that the Complainant failed to meet its burden , the disputed domain remains with the registrant . Finally , it should be noted that UDRP proceedings can be appealed through a federal lawsuit .
From the filing of a complaint to domain transfer , the entire UDRP process takes approximately 60 days and is , in almost all cases , significantly less expensive than litigation because it involves fewer filings and no formal discovery . While it is always preferable to prevent cybersquatting by registering all of the relevant domain names and variations your business may need , if you do discover a cybersquatter , the UDRP is a powerful and efficient tool to stop infringement and protect your business ’ s goodwill .
Kate Sherlock , Esq . is a Partner at Archer & Greiner , P . C . She has won numerous UDRP actions on behalf of her clients . If you have questions regarding the UDRP process , please contact Kate at ksherlock @ archerlaw . com or 856-673-3919 .
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