Domain Names Disputes (Cybersquatting)
An experienced Internet trademark lawyer can assist you to preserve your intellectual property rights from misappropriation by securing your domain name – this should be a top-priority. A component of Hinch Newman’s Internet law practice includes the representation of clients in trademark infringement cases involving domain names. If someone is infringing upon your intellectual property rights, you must first assess what it may take to make the infringer cease and desist from the continuing the unlawful conduct. Conversely, if someone is demanding that you cease certain conduct and threatening legal action, we can offer strategic guidance and risk analysis by balancing the best business decision in light of your options, including how to respond and whether to litigate.
Domain-name poaching is known as “cybersquatting.” Specifically, cybersquatting is registering, selling or using a domain name with the intent of profiting from the goodwill of someone else’s trademark. It generally refers to the practice of a third-party registering or “buying up” domain names that use your trademark or the name of your existing business with the intent to sell the names to you for a profit. If someone is cybersquatting on the domain name that reasonably matches your domain name or if the domain directs you to a website that offers products or services related to yours, it is likely the aforementioned individual is “willing” to sell it to you for a large sum of money. Hinch Newman can assist you with locating the domain name registrant and resolving these unfair competition practices in an aggressive fashion.
A cybersquatting victim has two litigation options. The first is to sue under the provisions of the Anti-Cybersquatting Consumer Protection Act (“ACPA”). The ACPA provides standing for a trademark owner to sue an alleged cybersquatter in federal court and obtain a court order transferring the domain name back to them. In some cases, the cybersquatter must also pay monetary damages. In order to prevail, the purported trademark owner must establish and prove that the domain name registrant had a bad-faith intent to profit from the trademark, the trademark was distinctive at the time the domain name was first registered, the domain name is identical or confusingly similar to the trademark, and the trademark qualifies for protection under federal trademark laws (the trademark is distinctive and its owner was the first to use the trademark in commerce). A defense to a claim under the ACPA may exist if it can be established that the defendant registered the domain name in good faith and not with the intent to sell it back to the trademark owner for a profit.
The second option is to use the international arbitration system created by the Internet Corporation of Assigned Names and Numbers (“ICANN”) to request the transfer of the domain name to you. The international policy for the resolution of domain name disputes implemented by ICANN is known as the “Uniform Domain Name Dispute Resolution Policy” (“UDRP”). ICANN may be used, and litigation avoided by, any person that alleges that a domain name is identical or confusingly similar to a trademark or service mark in which that person possesses rights, the domain name owner has no rights or legitimate interests in the domain name, and the domain name was registered and is being used in bad faith. In order to prevail, all of the foregoing elements must be established. Although financial remedies are not available pursuant to the UDRP, the subject domain name will be canceled or transferred if the complainant prevails and is generally more expedient and cost-effective than filing a lawsuit in federal court under the Anti-Cybersquatting Consumer Protection Act. Hinch Newman bills ICANN Domain Disputes at one flat rate.
The firm provides experienced Internet-based intellectual property legal counsel and will advise you on the best course of action to protect and defend the intangible assets you have worked so hard to create. We have the experience to assist with sales, purchases, leases, licenses, disputes involving trademark and copyright infringement concerns, domain name violations, and trademark registration or recuperation. If you feel that you have been victimized by a cybersquatter or that you valuable intellectual property assets are being threatened, please contact us directly or via our Free Online Case Submission Form to schedule a free consultation.