Domain Names Dispute Attorney & Cybersquatting Lawyer
A Domain name dispute and cybersquatting lawyer essentially handles domain branding and control issues. This includes cybersquatting domain disputes, which have unfortunately become a common occurrence and generally involve an alleged infringement or bad faith registration of a domain using an existing trademark or service mark. We assist businesses and trademark owners prevent infringement of their brands by unauthorized third-party domain name use. We also help domain registrants defend their rights to register and use domain names in commerce.
Uniform Domain Name Dispute Resolution Policy (UDRP)
A policy called the Uniform Domain Name Dispute Resolution Policy (UDRP) created by ICANN is now used by all accredited registrars. This policy has been developed to provide an alternative to the Anticybersquatting Protection Act. Under this policy, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name. While the courts have the authority to award control and ownership over domain names, the judicial process is notoriously slow and expensive. Most parties have recently strayed away from using the traditional court system and have turned instead to the UDRP dispute resolution process.
In order to prevail in a UDRP action, the trademark owner must show:
- That the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
- That the party that registered the domain name has no legitimate right or interest in the domain name; and
- That the domain name was registered and used in bad faith.
If the trademark owner successfully proves all three points in the administrative proceeding, then the domain name can either be cancelled or transferred to the prevailing trademark owner. If the trademark owner fails to prove any single point, the administrative panel will not cancel nor transfer the domain name.
Among the ways that a domain name registrant can prove a legitimate right or interest in a domain name is by showing:
- Use or preparations to use the domain name in connection with a good faith offering of goods or services prior to any notice of the dispute;
- The domain name owner has been commonly known by the second level domain name; or
- The domain name owner is making legitimate noncommercial or fair use of the domain name, without intending on (i) commercial gain, (ii) misleadingly diverting consumers, or (iii) tarnishing the trademark at issue.
Proving the last element, that the domain was registered and used in bad faith, presents the biggest hurdle for brand owners to overcome. Recently, some arbitration panels have begun to be persuaded by “retroactive bad faith registration” arguments. But, there has yet been no common or consistent acceptance of this argument. This is where a skilled domain lawyer can make a big difference.
The UDRP remedy exists regardless of the manner in which the Domain is being used. In other words, the fact that the Domain is not being used by you in commerce currently does not preclude the enforcement of a trademark holder’s rights as the holder of the underlying mark under existing U.S. law. In addition, the registration of a domain name before a trademark has been registered does not prevent a finding of confusing similarity. In fact, the UDRP makes no specific reference to the date on which a mark has been registered.
The UDRP is a fast-track procedure under which a trademark owner receives an order from an arbitration panel that the domain name be cancelled or transferred to the trademark owner. However, a trademark owner can still bring an action under the ACPA when the owner seeks any remedies in addition to canceling or transferring the domain name. For example, if the trademark owner seeks monetary damages in addition to the domain name, the mark owner must bring an ACPA lawsuit. Another reason to use the ACPA is to avoid the time and expense of an administrative action when the trademark owner suspects the cybersquatter would appeal the results of the action. (After a ruling against a cybersquatter in a UDRP action, the cybersquatter has ten days to bring a lawsuit to prevent the transfer or cancellation of the domain name). Since an ACPA action is in fact a lawsuit, this means it will be costly and time-consuming.
We have filed multiple complaints under the UDRP and have helped my clients respond to complaints. We have successfully recovered domains using neutral arbiters such as the World Intellectual Property Organization (WIPO) to hear our client’s UDRP cases and provide a binding decision. Let Philip A. Nicolosi, an experienced domain name lawyer, protect or defend your rights.
Anticybersquatting Consumer Protection Act (ACPA)
The Anticybersquatting Consumer Protection Act (ACPA) was made law in November of 1999. This act made it easier for individuals and companies to assert ownership over domain names that are confusingly similar to their names or valid trademarks. However, anyone seeking protection under this Act must still establish that the domain name holder acted in bad faith. One portion of this Act relates to famous persons. It allows individuals to file a civil action against anyone who registers their name as a second level domain name for the purpose of selling the domain name for a profit.
The Act also protects companies against persons who, in bad faith, register a domain name that is the same or confusingly similar to an existing trademark. The Act sets forth a variety of factors used to determine what constitutes bad faith, centered around principles of fair use and intent.