4 Ways to Take Back Your Domain Name from an Unruly Cybersquatter
March 01, 2017
The laws that apply to trademark infringement of business name offline have long extended towards the web scene. More people complain each day about the illegal activities of cyber-squatters, and being robbed off their hard-earned business.
If you fail to protect your domain name, chances are you will be denied the patronage you have worked so hard to build over the years. However, the good news is you can no longer fold your arms helplessly while this happens. This article tackles 5 ways to take back control of your domain name.
What is cyber-squatting?
Cybersquatting is the registering, reselling or application of a domain name with the malicious intent of gaining from the goodwill of someone else trademark. Generally, it is the practice of purchasing domain names of existing businesses with the aim of selling back to those businesses for a profit. In many countries, cybersquatting is illegal and are often handled in an arbitrary proceeding under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP).
If you are a victim of cyber-squatting, here are a few things you could do
1. Send a letter of cease-and-desist on your official letter-head
This is one way to start legal action against the party. The cease and desist letter must contain:
- State clearly that you have a trademark to the domain name
- Tell them they are infringing on your trademark and damaging your business
- Warn them to stop using your mark now or in the future
- Instruct them to transfer the domain name to you
- Finally, conclude the letter by letting them know they’ll be hearing from your attorneys if they fail to carry out your request. And the legal action will include a claim for losses incurred.
2. Discuss the possibility of a trademark licence agreement with the cyber-squatter
Depending on the circumstances of the situation, perhaps if the infringer genuinely did not intend to take your mark. In some cases, they may be using the trademark under a license agreement. While an agreement isn’t always straightforward, it is a likely option for this circumstance.
However, the downside of this decision is that it may be expensive to negotiate, prepare and sign the license agreement. The terms may not be as you would like it to be and the licensee will continue to use the trademark.
3. Have your lawyer serve them a cease-and-desist letter
No doubt, this will cost you but it is important to understand how much you are losing to the cyber squatter and what it’s worth to get it back. But it does increase your chances of receiving the righr response. In many cases, infringers without the complete resources to prove the right to use a mark often cave in to legal pressure.
In this case, rather than being the defendant in a lawsuit or an ICAAN Uniform Domain Name Dispute Resolution Policy (UDRP) action. “You can claim all rights to your domain name; ensure most keyword queries reveal your website, even and any long tail keyword should reveal your website at the search engine result page.” - Brendan from NZ Based Web Hosting | Freeparking
4. File a lawsuit in a federal court citing violations of the Anti-cybersaquatting Consumer Act Protection
The ACPCA is a ten-year old reformation of the Lanham Act. Trademark owners have the power to regain control of their infringed domain names with this act. However, like all legal actions, the drawback is that it will take more time litigating the case than it will take in a UDRP arbitration and much high legal expenses.
The only solution in a UDRP action suit is an award from the arbitrator requiring the domain registrar name to cancel, transfer or otherwise change to domain name registration. The owner of trademark who seeks additional compensations such as money, or a restriction against continued infringement must file a lawsuit via the Lanham Act or laws or other applicable laws.