Recover Your Domain Name, and Perhaps Some Money, Too
From defendant Nahum’s website at the hijacked domain
Just over a year ago (Who is the Master of Your Domain? [or, How to Prevent Domain Name Hijacking]), I wrote about recovering a client’s domain name from a disgruntled former employee via ICANN’s Uniform Domain-Name Dispute-Resolution Policy. A recent case from the U.S. Court of Appeals for the Ninth Circuit (DSPT International v. Nahum) shows that under federal trademark law, an aggrieved domain name owner may be able to recover monetary damages, too.
Defendant Lucky Nahum worked for plaintiff DSPT International and worked with an outside supplier to set up DSPT’s website. Without telling DSPT’s owner, Nahum registered the website’s domain name in his own name.
When Nahum left DSPT to work for a competitor, he removed DSPT’s information from the website, directed users to e-mail him (see graphic above), and held the domain name hostage for payment of commissions that Nahum believed he was owed.
These actions caused DSPT significant financial losses. DSPT brought suit, and was awarded more than $150,000, under the Anti-Cybersquatting Consumer Protection Act (15 U.S.C. Section 1125(d)). The Court of Appeals upheld the verdict, ruling that DSPT satisfied the three elements of the ACPA:
- the defendant registered, trafficked in, or used a domain name;
- the domain name is identical or confusingly similar to a protected mark owned by the plaintiff; and
- the defendant acted with bad faith intent to profit from that mark.
Bottom line: If domain name hijacking causes sufficient harm, consider bringing a suit to recover damages under the ACPA in addition to recovering the domain name via the UDRP.
Compare the ACPA elements described above to the UDRP elements described in How the UDRP Can Defeat a Cybersquatter.
Related post: How to Defeat a Cybersquatter, Part 2: Going to Court
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.
