What Is Cybersquatting and What Can Be Done About It? ACPA or UDRP?
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June 25, 2007
|Mr. Cohen is the founder and principal of the Law Office of Michael N.
Cohen. Mr. Cohen specializes in intellectual property and is a licensed
patent attorney in Los Angeles, California. Michael Cohen can be
reached at 310-288-4500, patentlawip.com or trademarkattorneyip.com
has written 2 articles for DomainInformer.
|View all articles by Michael Cohen...
Have you ever had a third party register a domain name that is
either exactly the same or very similar to your trademark? If so, it
may be a Cybersquatting issue. Cybersquatting is registering,
trafficking in, or using a domain name with a bad-faith intent to
profit from the goodwill of a trademark belonging to someone else. To
address this issue, Congress enacted what is known as the
Anticybersquatting Consumer Protection Act ("ACPA"). The ACPA amended
the Lanham Act by providing trademark owners with a civil remedy against cybersquatting.
you’re not sure how this may affect your business, let’s run through
some examples. The typical scenario is that the name of your product,
or your company name is a registered trademark (or a strong common law
trademark). However, you failed to register the domain name for
whatever reason. Joe Schmo cybersquatter decides to beat you to the
punch and registers the domain name of your trademark. He may have even
registered plural versions or misspellings of your trademark as well
(this is known as typosquatting). Joe Schmo cybersquatter is simply
holding the domain name for ransom hoping to sell it back to you for a
nice profit, or he may decide to keep domain name knowing that he will
get a lot of traffic to his websites. The cybersquatter may sell
products similar to yours or is simply engaged in affiliate marketing
and makes money off of the clicks on his website. These situations can
obviously cause consumer confusion and can easily cause lost profits to
your company and dilution of your trademark(s) as well.
One avenue of recourse is filing an ACPA claim in federal court. The Plaintiff in an Anti-Cybersquatting suit must establish:
1. The Defendant has a bad faith intent to profit from the mark, including a defendant name which is protected as a mark;
2. registers, traffics in, or uses a domain name that--
in the case of a mark that is distinctive at the time of registration
of the domain name, is identical or confusingly similar to that mark; (II)
in the case of a famous mark that is famous at the time of registration
of the domain name, is identical or confusingly similar to or dilutive
of that mark; or (III) is a trademark, word, or name protected by
reason of 18 U.S.C. § 706 (the Red Cross, the American National Red Cross or the Geneva cross) or 36 U.S.C. § 220506
important to distinguish cases in which the cybersquatter is obviously
acting in bad faith, from situations in which the individual simply
registered the domain name with the intent of doing something else with
it that is unrelated to trademark owner’s goods and/or services.
ACPA excludes a finding of bad faith where the domain name holder
reasonably believed that the use was “fair use” or otherwise lawful.
Accordingly, bad faith is the biggest component in an ACPA claim. So
what is bad faith? There are several elements the federal courts will
consider such as:
The trademark ownership rights held by the mark owner;
The closeness of the domain name and the cybersquatter’s name;
The cybersquatter’s commercial use of the domain name for access to a web site;
The cybersquatter’s intent to divert web traffic from the mark owner;
The cybersquatter’s offer to sell the domain name to the mark owner;
Whether the cybersquatter gave misleading information in registering the domain name; and
Similar or repeated cybersquatting on other marks.
example, in Hasbro Inc. v. Clue Computing Inc. [66 F. Supp.2d 177 (D.
Mass 2000)], the district court held that Clue Computing’s use of its
registered domain name clue.com, was in fair use, despite Hasbro’s
existing registration of the trademark “Clue” for its famous board
game. The two company’s fields in which the names were used were not
related; Clue Computing had registered the disputed domain name first,
used it in legitimate commerce, and not attempted to sell the domain
name to Hasbro.
UDRP or ACPA?
if you’ve concluded that someone has cybersquatted one of your
trademarks, should you file a ACPA lawsuit? Before doing so, you should
consult with your intellectual property attorney about other avenues
such as the Uniform Domain Name Dispute Resolution Policy (“UDRP“).
UDPR is an ICANN-approved arbitration that resolves domain name
disputes submitted to ICANN for resolution. Very often (nearly 75% of
UDRP cases) results in the cancellation of the cybersquatter’s domain
name registration. The standards to establish cybersquatting in UDRP
cases for wrongful registration is very similar to ACPA’s standards.
Furthermore, UDRP proceedings are typically much less expensive and
quicker (about 2-3 months total compared to ACPA which is federal
litigation and may take years if not settled before trial). Another
advantage with the UDRP is that it’s well suited for international
domain name disputes because the hearings are ex parte (based only on
filed documents; no witnesses or parties are present). UDRP can be used
in addition to an ACPA litigation or possibly done before or after an
ACPA ruling because UDRP rulings are not binding upon the courts. Also,
UDRP findings may be appealed. This is a departure from most
arbitration practice (www.icann.org/udrp).
remedies in UDRP proceedings are limited to only transfers of the
domain name. Compared to an ACPA litigation, the Plaintiff may obtain
monetary damages, attorney’s fees and costs (in exceptional cases),
and/or an injunction, in addition to the cancellation or transfer of
the improper web domain name to the original owner. Furthermore, under
ACPA the Plaintiff has the option of suing for statutory damages for
$1,000 to $100,000, as the court deems just under the circumstances.
© 2007 Michael N. Cohen, Esq. Mr. Cohen is registered to practice before the United States Patent and
Trademark Office as a patent attorney and has an expertise in the
following areas: Patent infringement, copyright infringement, and
trademark infringement, business transactions, and entertainment law.
Counseling clients with regard to issues involving use, registration,
and prosecution of patents, trademarks, copyrights, and domain names.
Mr. Cohen is also active in rendering patent and trademark validity and
infringement opinions in a wide range of technical disciplines. Mr.
Cohen has argued and prepared motions and briefs in proceedings before
the United States District Courts, the United States Patent and
Trademark Office, as well as appellate practice before the Court of
Appeals for the Federal Circuit.
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This article is not intended as a substitute for
legal advice. The specific facts that apply to your matter may make the
outcome different than would be anticipated by you. You should consult
with an attorney familiar with the issues and the laws.