cybersquatting
As part of our Trademark practice, we provide cybersquatting litigation services.
We solve cybersquatting, typosquatting, domain hijacking, social media & other Internet infringement disputes.
Definition
Cybersquatting is the act of registering, trafficking, or using an Internet domain name in bad faith. Domain squatters generally rely on generating profits from the sale of domains to trademark owners at an inflated price. However, bad faith use or registration can occur from any of the following scenarios.
Registration to sell the domain to the trademark owner or its competitor for large profit
Engaging in a pattern of registration of domains to prevent a trademark owner's use of its mark in a corresponding domain name
Registering a domain to purposely disrupt a competitor’s business
Using the domain to create consumer confusion to attract consumers to the domain
Some people purchase domains with the intent to resell. Such act is not illegal, unless the intent is to sell to a rightful owner (or a competitor) for an inordinate price tag or other bad faith activity. Additionally, the purchase of domains isn’t monitored. Anyone can legally buy domains just to have for potential future use. However, domain acquisition to intentionally prevent a trademark owner from obtaining domains with its mark may be considered squatting and illegal. Likewise, using a domain similar to a competitor’s mark to direct the competitor’s consumers to your domain is likely illegal domain use. Basically, cybersquatting is a form of trademark infringement through domain registration.
Our experience in trademark, social media, and Internet law provides us an advantage in fighting cybersquatting. We advise our clients on a course of action regarding domain squatting dispute resolution options and methods.
Typosquatting and Other Domain Dispute Issues
With the growth of the Internet and social media platforms, a myriad of other versions of cybersquatting have evolved. For example, typosquatting refers to the registration of domains with the misspelled mark of another. Typosquatting is also known as URL hijacking. It targets Internet users who incorrectly type a domain name or search term.
Other domain disputes include domain hijacking, domain hacking, pagejacking, identity theft, and numerous other domain, email and social media schemes. Domain hijacking is domain theft and occurs when a person changes the registration owner of a domain, thereby stealing it from the rightful owner. Pagejacking occurs when a hacker copies the webpage of another using it on a third party domain website. This tricks consumers into providing confidential information resulting in identity theft.
Another often overlooked issue we advise clients about is registration of social media handles. We recommend the registration of client’s primary trademarks across social media platforms to prevent third party acquisition. As part of our trademark clearance searching, we also review social media handles for prior rights that could be of trademark concern.
To prevent domain issues, we advise clients on best practices for handling domains to help prevent the hijacking or other misuse of their domains. As part of our corporate and business services, we offer corporate governance counseling so clients implement policies, checks and balances. A company’s information technology security policies and procedures should address issues of cybersecurity.
Our Internet lawyers help resolve domain disputes. In addition, our attorneys handle litigation in state and federal courts. We are knowledgeable in online intellectual property law.
Protection and Prevention: Trademark Clearinghouse
New Top Level Domains (TLDs) were released in 2014. This created a reemergence of domain squatting issues. Therefore, we offer Trademark Clearinghouse monitoring services. The Trademark Clearinghouse helps brand owners police their marks. Monitoring is important because of the growing amount of TLDs being released.
The more domain extensions available to the public, the more availability there is for trademark infringement through domain registration. Cybersquatters have hundreds of new domain extensions they can use to infringe upon unsuspecting trademark owners. However, registration with the Trademark Clearinghouse allows brand owners the following advantages for protection of your brand from infringement:
Get a first look at new TLDs
Option for first pick of new domains
Receive notifications of potential infringement
Access to dispute resolution and blocking mechanisms
We assist clients with Trademark Clearinghouse monitoring. We also advise our clients on other proactive domain protection options.
Internet Laws
Some jurisdictions have laws that address cybersquatting. For example, the United States passed the Anticybersquatting Consumer Protection Act (ACPA) in 1999. The ACPA is an expansion of the Lanham Act (federal trademark law). It provides a cause of action if someone is found to be: registering, trafficking in, or using a domain name that is deemed to be confusingly similar to, or dilutive of, a trademark or personal name.
The "Federal Trademark Dilution Act" has also been used to sue domain name registrants that use domains deceptively, such as if they are used to palm off the goodwill of established trademarks.
However, a consumer can only establish a cybersquatting claim if the mark involved is distinctive or famous to warrant protection. Consumers cannot file claims of cybersquatting simply because they covet a domain name.
We assist clients with ACPA litigation. We also advise our clients on other proactive cyber security protection options to help avoid litigation.
Uniform Domain Dispute Resolution Policy (UDRP) or Litigation
To respond to cybersquatting, a trademark owner has the option of filing a UDRP proceeding or a lawsuit in state or federal court. In addition, some social media platforms and websites prohibit cybersquatting and username squatting in their terms of use/service. Those platforms provide mechanisms for reporting abuse and seeking dispute resolution through the social media provider.
We assist clients with UDRP proceedings. We also prosecute and defend clients in litigation in state and federal court. Our trademark attorneys advise our clients on proactive domain and cybersecurity protection options. See our post Third Party Holding Your Trademark Hostage? How to Evict Domain Squatters from Your Intellectual Property for additional information on stopping domain squatters.
Disputes and Domain Name Recovery Litigation
We have extensive experience litigating cybersquatting and domain name disputes. Read more about our litigation services at our intellectual property litigation overview page and our business litigation overview page, including UDRP Domain Name Proceedings, Domain Name Litigation, and Trademark Litigation.
Additional Insights
For more information on cybersquatting, see our Legal Insights and Industry Solutions pages.
