You’ve registered a domain name for your website, blog or company as you start the business. Now, you see that there is someone using your name or something similar in their own domain. Maybe they are reselling your products or trying to trade on your company’s goodwill.
What can you do about it?
There are a few ways to deal with this kind of trademark cybersquatting. Let’s look at them, along with the pros and cons of each.
Sending a Cease and Desist letter:
The first step in many legal disputes over intellectual property is to send a cease and desist letter. This letter outlines your rights as an IP owner and lets the other party know that they are infringing on those rights. The letter then asks that other party to stop their infringement. If they don’t, the letter will say, you will take further legal action.
These letters can often be very helpful in avoiding expensive lawsuits and other actions. Many times, the person who registered the domain doesn’t know that they are not allowed to do that. While ignorance of the law doesn’t make what they did right, shocking them with an official-looking letter threatening legal action can often get the point across for very little cost.
If they don’t respond or refuse to comply, there are generally two options to take after that.
The first step in many legal disputes over intellectual property is to send a cease and desist letter.
The Anti-Cybersquatting Consumer Protection Act:
The ACPA is a US federal law that gives trademark owners a way to sue people who register and use domains that are confusingly similar. Getting relief under this law requires a federal lawsuit to be filed against that person, however.
In order to win this ACPA lawsuit, the trademark owner has to prove that the other party has a domain that is confusingly similar to their existing trademark and that they have a “bad faith” intent to profit from this domain confusion. There’s a bunch of factors that they use to figure out whether or not bad faith is present.
- whether or not there is an intent to divert consumers from the legit site,
- whether the other party tried to sell the domain to the trademark owner, and
- the fact that the infringer has multiple registrations of the same trademark, among others.
As with everything, there are good and bad aspects of bringing this kind of lawsuit.
- high potential for damages (up to $100,000 in statutory damages, for example)
- possible award for attorneys’ fees
- possible injunction to stop the other party from using the domain name
- the cost of a lawsuit in the US (hint: it ain’t cheap)
- could take years to get a resolution
- whether or not you or the other party are US citizens and under the jurisdiction of the ACPA
whether or not the infringer has any money to pay your damages and your legal fees after you win
If these considerations give you pause, there may be a better option.
Uniform Domain-Name Resolution Policy actions:
UDRP actions are an alternative way to resolve domain name disputes without going to the courts. They are run by ICANN, and don’t involve any kind of trial. There is simply the filing of a complaint and the other side’s response. The complaining party can then reply to that response.
A single arbitrator makes the decision, but the parties can get three arbitrators if they pay more.
The only remedy you can get is to have the domain name transferred to you. In many cases, though, this is all that is needed.
However, there aren’t any kind of money damages available in these actions. The only remedy you can get is to have the domain name transferred to you. In many cases, though, this is all that is needed.
- Simpler and faster process, often completed in just a few months, rather than years (as under the ACPA)
- Much cheaper than a lawsuit
- Doesn’t rely on the other party having money – you just get the domain name at the end
- No money damages or attorneys’ fees available if you win
- You have to submit to jurisdiction in the place where the domain name registrar is located, both for this action and any future lawsuits
- Relying on a single arbitrator (in most cases) to make the decision
So, when someone is stealing your domain name or trading off your brand to make their own website, there are remedies. Which one you choose can depend on your budget, your location and how long you are willing to wait for relief. The initial cease and desist letter is usually a good idea, though.