How to Defeat a Cybersquatter
Someone has obtained a domain name that is the same as, or confusingly similar to, a trademark or service mark that you own. How can you take the domain name from this “cybersquatter”?
When he registered the domain name, the cybersquatter (the Registrant) agreed to ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP).
Under the UDRP, you (the Complainant) will be required to prove the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which you have rights; and
(ii) the Registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The following are examples of registration and use in bad faith – the facts on which UDRP decisions often turn:
(i) circumstances indicating that the Registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Registrant has registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
(iii) the Registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.
The UDRP does not necessarily require that either party be represented by a lawyer. However, Complainants, especially, with their marks and businesses at stake, often decide to retain legal counsel to ensure that all Rules are complied with and the complaint cites appropriate facts and authorities.
- How to Defeat a Cybersquatter, Part 2: Going to Court
- Gingrich Domain is Newtered – But the UDRP Probably Won’t Help
Check out all posts about cybersquatting.
Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.