How to Defeat a Cybersquatter, Part 2: Going to Court
In How the UDRP can Defeat a Cybersquatter, I wrote about ICANN’s Uniform Domain Name Dispute Resolution Policy. The UDRP provides a quick, inexpensive way to recover a domain name from a cybersquatter (someone who has obtained a domain name that is the same as, or confusingly similar to, a trademark or service mark that you own). However, if you want to recover money, you will have to go to court.
Before proceeding further, let me be clear: I think lawsuits should be avoided whenever possible. As a trial lawyer told me many years ago, “Litigation is a terrible way to run a business.” Unfortunately, litigation sometimes is necessary.
The Anticybersquatting Consumer Protection Act (15 U.S.C. Section 1125(d)) was enacted in 1999. Simplifying a bit, ACPA allows the owner of a mark to bring a civil action against an individual or entity that (i) has a bad faith intent to profit from that mark and (ii) registers, traffics in, or uses a domain name that is identical or confusingly similar to that mark.
ACPA then goes on to provide a non-exclusive list of factors that can be considered in determining bad faith intent. These include, for example intellectual property rights of the alleged cybersquatter; any prior bona fide use of the domain name; intent to divert consumers in a manner that could harm the goodwill represented by the mark; and an offer to assign the domain name for financial gain without bona fide use of the domain name.
Another benefit of ACPA recently was established by the U.S. District Court for the Western District of Washington in Microsoft v. Shah, et al.: Those who help the cybersquatter (“contributory cybersquatters”) can be sued, as well.
Related post: Recover Your Domain Name, and Perhaps Some Money, Too
Check out all posts about cybersquatting.
Photo credit: Robert Linder via stock.xchng
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.
