Home Add to Favorite Contact Submit  
             25 September, 2021

Category:  Articles » Reference & Education » Legal


How To Sue Cybersquattors With UDRP Or ACPA

         Views: 1747
2007-07-07 13:31:43     
Article 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 civl remedy against cybersquatting.

If 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 of the main approaches is to file 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--

(I) 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. section 706.

However, you must distinguish cases where the cybersquatter is obviously acting in bad faith, from situations in which the individual has merely registered the domain with the good faith intent of doing something else with it (that is unrelated to trademark owner's goods and/or services).

The 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. For 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.


So if you've concluded that someone has cybersquatted one of your trademarks, should you file a ACPA lawsuit? You should consult your intellectual property lawyer about other possibilities such as the Uniform Domain Name Dispute Resolution Policy ("UDRP")"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 parties or witnesses 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).

However, the 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.

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.

Mr. Cohen specializes in intellectual property and is a licensed patent attorney in Los Angeles, California. No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author. Michael Cohen can be reached at 310-288-4500, http://www.patentlawip.com or http://www.trademarkattorneyip.com Copyright (c) 2007 Michael Cohen

Specialized in: Patent Attorney Los Angeles - Trademark Lawyer Los Angeles - Attorney Copyright - Intellectual Property Law Firm - Domain Name Disputes - Entertainment Law - Internet Law - Corporate Law - Business Attorney California - Corporation Attorney - Contract Review - Patent Infringement
URL: http://www.patentlawip.com
Print article      Bookmark this page
Related Articles 
A Guide for Veterans Searching for a Highly Experienced Mesothelioma Lawyer (Popularity: ): U.S. veterans are at risk for developing mesothelioma. This is a condition resulting from exposure to asbestos. There are many other dangers associated with asbestos exposure, something that asbestos manufacturers did not reveal. In this short guide, you’ll learn more about this condition as well as how to choose the right mesothelioma attorney to help you file a claim or lawsuit.The Use of Asbestos by Branches of the United States ...
Typical Cases Handled by Accident Lawyers Pennsylvania (Popularity: ): Accidents are often caused owing to negligence or disregard for others’ safety. If you are a victim of such an accident, getting timely medical and legal help is of utmost importance. Accidents can be of many types. Sometimes, accidents that seem like minor ones could lead to serious physical damage and monetary losses. Accident lawyers Pennsylvania can help you deal with all the issues arising from an accident, especially one ...
How To Write Winning Law School Personal Statements (Popularity: ): After weighing academic performance, law schools are most interested in assembling a class of interesting people. In this sense, their criteria are broader than those used by business or medical schools, whose applicants face more clearly defined expectations. Unfortunately, law school applicants often find this freedom intimidating rather than encouraging.Too often writers resort to a safe route, and it should be obvious why such an approach would prevent them from ...
Accident at Work Compensation – Who Will Pay (Popularity: ): There is a very detailed list of laws in the UK concerning health and safety in the workplace. These laws are given by the HSE or the Health and Safety Executive which controls the access and utilisation of dangerous materials, equipment handling and noise related issues in the workplace. If your employer fails to uphold these laws then they are accountable to give accident at work compensation to the injured ...
Things to Avoid While Filing Whiplash Claim Compensation Requests (Popularity: ): Most claimants are aware of the things that they need to do while filing a whiplash claim compensation request but many claimants are not aware of the few things that must not be done. This article will elaborate on a few things that can cause your whiplash claim compensation request to be denied immediately. Never admit liability. Although it may seem instinctive to apologize for the accident and claim liability, ...

Related Business 
UDRPinfo.com (Popularity: ): Practical policy and statistical information relating to the ICANN's UDRP (Uniform Domain-Name Dispute Resolution Policy), links to UDRP providers, policies, decisions, panelist profiles and an e-mail update service.
Wolfe, Tom and Sue (Popularity: ): Oil paintings of Tom and Sue Wolfe. They specialize in local landscapes and still lifes, in impressionistic and realistic styles. Images, calendar, purchase information, chat with Tom and Sue.
Packard, Sue - 6legs.com (Popularity: ): Insect and creature illustrations, cartoons, and comics by Sue Packard.
A Supa Smile (Popularity: ): Our boutique style, relationship based dental clinic in Croydon was established by Dr Sue, a Melbourne University trained dentist practising since 1983. Sue is supported by her equally experienced, professional and caring staff who are dedicated to going out of their way to ensure your experience here is comforting and gentle.
Visual Voices (Popularity: ): Artists creations in painting, digital imaging,painting, collage textile arts, photography and assemblage gather in a virtual gallery, featuring Barbara Boothe-Loyd, Sue Burke-Harrington, Ann Bellinger Hartley, Sue Liska and Judith R. Shamp.
Letterboxing with Mark & Sue (Popularity: ): Mark & Sue Pepe hail from Kensington, CT USA. After finding their intial box in June 2002, they have found letterboxes in 11 states and placed boxes in 2 states & Aruba.
Images by Bob (Popularity: ): Images by Bob DiCaprio, Inc. was opened in Woonsocket in 1978 by Bob and Sue DiCaprio. Bob and Sue have 20 years of experience in the portrait and event photography field.
Clown Accessories, Theatrical Makeup (Popularity: ): Years ago, Sue Conley, A.K.A. Krakel the Clown, A.K.A. Magical Myrna, was troubled by the fact that good selections of quality clown accessories and supplies were very difficult to find, except at conventions. Sue and her partner Doug Chapman, A.K.A. Crabapple the Clown, opened Clown City in December of 1990 in Gales Ferry, Connecticut.
American Cleft Palate/Craniofacial Association (ACPA)/Cleft Palate Foundation (Popularity: ): Information and support from this newly combined organization.
Sue Horowitz Modern Jewish Music (Popularity: ): Sue Horowitz is a Jewish singer-songwriter and Jewish guitar player who lives in coastal Maine. She writes, often in partnership with Reform Jewish Rabbi Lev Baesh, highly singable and usable modern Jewish songs appropriate for worship services at synagogues, camps, youth groups, Jewish holidays, and religious ceremonies.