Identifying, Securing, and Defending Intellectual Property Rights

Cybersquatting & Domain Name Disputes

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Trademark Cybersquatting is happening to me. If someone has registered a domain name which is the same or confusingly similar to your trademark or business name, you may be able to have that domain name transferred to you under the Uniform Domain-Name Dispute Resolution Policy (UDRP) or under the Anticybersquatting Consumer Protection Act (ACPA).

The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for coordinating the Internet system of unique identifiers, such as domain names. ICANN accredits domain name registrars, who provide domain registration services to the public. Such registrars agree to follow the UDRP.

The UDRP provides that in order for a Complainant to recover a domain name through the UDRP process, the Complainant must show, the following three elements:

  1. The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which you have rights; and
  2. Respondent has no rights or legitimate interests in respect of the domain name; and
  3. The domain name has been registered and is being used in bad faith.

Determining whether each of the three elements above should be left to an experienced attorney as developments may impact the way each element is interpreted. For example, some UDRP decisions have found bad faith use even when the website was not active.

In addition to the UDRP procedure, the ACPA provides trademark owners with the option to pursue a lawsuit to stop infringement when another registers, traffics in, or uses a domain name that is confusingly similar to the owner’s trademark.

Contact an Erickson Law Group attorney experienced in cybersquatting law to evaluate your options for taking action against cybersquatters.

A wrongful claim of cybersquatting is made against me. The Erickson Law Group defends against wrongful claims of cybersquatting. Under the UDRP there are a number of defenses that might be asserted wrongful claims, including but not limited to:

  1. before any notice to you of the dispute, you used, or you made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
  2. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
  3. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Similar to the defenses under the UDRP, the following defenses might be avaliable under Anticybersquatting Consumer Protection Act (ACPA):

  1. you have trademark or other intellectual property rights in the domain name;
  2. the domain name consists of the legal name of the registrant or a name that is otherwise commonly used to identify you;
  3. you previously used the domain name in connection with the bona fide offering of any goods or services;
  4. you made a bona fide noncommercial or fair use of the mark in a site accessible under the domain name; or
  5. the party asserting a claim against against you has a weak trademark with only a narrow scope of protection.

There may be other defenses that can be asserted against wrongful claims of cybersquatting. Contact an Erickson Law Group attorney experienced in cybersquatting law today to evaluate defenses that may be available to you.