The CaseAgainst Cybersquatting A Discussion of Domain Name Trademark Protection By Matt Poole
What is cybersquatting? • Cybersquatting refers to using an Internet domain name with the intent of profiting from someone else's name recognition. It generally is associated with the practice of buying up domain names that are similar to the names of existing businesses with the intent to sell these names back to the owners.
What is a domain name? • On the World Wide Web, a service called the Domain Name System (DNS) helps users to find their way around the Internet. DNS translates between user-friendly host names and the numerical addresses that computers actually use. • Management of domain names is overseen by the Internet Network Information Center (InterNIC), which is itself a division of the Internet Corporation of Assigned Names and Numbers (ICANN). • Typically, available domain names are registered and leased on an annual basis through InterNIC. • While www.chicken.net may be taken, www.chicken.coop might be available!
Who cares? • Federal trademark law is covered by the Lanham Act, 15 U.S.C. §§1051-1127, which was originally enacted in 1946. • The Anticybersquatting Consumer Protection Act took affect on November 29, 1999. This new domain name dispute law is intended to give trademark owners legal remedies against defendants who obtain domain names "in bad faith" that are identical or confusingly similar to a trademark or service mark.
What has to be proven in court: • The key element is "bad faith intent.” • The ACPA lays out some guidelines in determining if the requisite bad faith exists. In determining if the defendant has bad faith, the court may consider factors such as whether the domain name is actually someone’s legal name, whether the domain name was ever used to purvey goods and services, the defendant’s alleged intentions or any misrepresentation of contact information on the site. • Perhaps the most important consideration is whether or not the defendant attempted to sell the name back to the business owner.
Other Options • A victim of cybersquatting in the United States can sue under the provisions of the ACPA, or can fight the cybersquatter using an international arbitration system created by ICANN. The ICANN arbitration system is thought to be faster and less expensive than suing under the ACPA, and the procedure does not require an attorney (!). • If the owner of a domain name cannot be found and served with a summons and complaint, the trade mark owner may bring an "in rem" action against a domain name in the judicial district in which the domain name registrar is located. The remedies in an in rem action for cybersquatting are limited to a court order for cancellation of the domain name or the transfer of the domain name to the owner of the trademark. Money damages are not available.
Conclusion“What I want you to take away…” • As the ‘Net continues to evolve, we can all rest assured that new and creative opportunities will continue to become available, and it will be up to congress and the U. S. court system to determine what is fair and what is not.