Domain names have become precious commodities as the internet has no boundaries and no closing hours and unlike trade marks each domain name is unique. Domain names and disputes are managed according to policies set by ICANN (Internet Corporation for Assigned Names and Numbers).
There are a number of steps that can be taken to protect domain names.
- Register common misspellings
- Register the domain name as a trade mark
- Purchase new gTLDs and ccTLDs when they become available
- Consolidate domains into one company in the group
- Active monitoring
- Searches prior to registration
- The Uniform Domain-Name Dispute-Resolution Policy (UDRP)
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
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.
A cybersquatting victim has a number of 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.
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.
Another 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”).
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.
Juris Logium assist you to preserve your intellectual property rights from misappropriation by securing your domain name. We assist the clients in trademark infringement cases involving domain names.