Domain Name Disputes
DOMAIN NAME DISPUTES – www.HeyThatsMyName.com
As the Internet continues to play an ever important role in the business world, disputes regarding domain names (web site names) arise more frequently. Many business owners have no idea what remedies are available to someone who has had their name stolen by another company or simply by an opportunistic cyber-squatter. If you have ever been in this position, have no fear, there are remedies available. There is a dispute resolution policy adopted by ICANN (Internet Corporation for Assigned Names and Numbers) and Congress recently adopted the Anti-Cybersquatting Consumer Protection Act (ACPA) to provide legal remedies for wrongful domain name registrations.
ICANN Dispute Resolution Process
The ICANN dispute resolution procedure is available to challenge virtually any domain name registration as when the name is registered you consent to abide by ICANNs rules regarding domain name disputes. The dispute process is not overly complex and is relatively inexpensive. To prevail in the dispute resolution process the party complaining must show the following three elements:
- The complaining party owns the trademark (registered or unregistered) that is the same as, or confusingly similar to the domain name in question;
- The party with the domain name registered has no legitimate interest in the domain name; and
- The domain name was registered, or used, in bad faith.
The most difficult element to prove is often the bad faith requirement. Examples of bad faith include: 1) registering the domain name for the purpose of selling the name to the trademark owner; 2) showing a pattern of similar registrations; 3) registering the name to disrupt a competitors business; or trying to attract users for commercial gain based upon the likelihood of confusion with the trademark. The party who has registered the domain name can have a strong defense if the name is being used for a legitimate business purpose.
If you successfully prove the three points above, ICANN will either cancel the domain name registration or transfer the name to the complaining party.
Anti-Cybersquatting Consumer Protection Act
The ACPA was enacted in late 1999 to address the problems caused by cybersquatting on the Internet. The ACPA is very similar to the ICANN dispute resolution policy in that to prevail you must show:
- The party registering the domain name has a bad faith intent to profit from that mark; and
- the party registers, traffics in, or uses a domain name in a way that harms the trademark owners commercial interests and that the domain name is deceptively similar to the trademark or will cause the trademark to become diluted.
Again proving bad faith is often the key to prevailing on an ACPA lawsuit. The ACPA provides a list of factors to consider when determining bad faith, including: 1) the extent to which the mark is the legal name of the person or is commonly used to identify that person, 2) the domain name holders prior lawful use of the mark in connection with the sale of goods or services, 3) the persons intent to divert consumers from the mark owner, and 4) any offers to sell the domain name to the mark owner.
One reason to consider an action under the ACPA rather than the ICANN policy is the ability to recover damages from the cybersquatter. Under the ACPA a party can recover any damages incurred as a result of the bad faith registration as well as any profits the cybersquatter made from the domain name. Of course, the trademark owner can also obtain the rights to the domain name in an ACPA action. The drawback to the ACPA is that it involves commencing a legal action and thus can be costly and time consuming, although it is possible to recover attorney fees in an ACPA action if the registration is egregious.
If you believe that someone has infringed upon your trademark or is cybersquatting on your domain name, contact an attorney that handles such issues to determine what options you have available to protect your rights.