What Happens In A Domain Name Dispute?
Having an Internet address that is easy for customers to find and remember is important for a business. Unfortunately, the domain name that best reflects the business may already be taken. Often, this is because a legitimate business with a similar name is using the Web address. Sometimes, however, a “cybersquatter” has bought the domain name in anticipation of selling it for a high price to the business that owns the related trademark. If this happens, the business has legal options.
What kind of help is available when a domain name has been unfairly taken?
According to the federal Anti-Cybersquatting Consumer Protection Act (ACPA), a cybersquatter is someone who registers, uses or traffics in a domain name that is confusingly similar to a name protected as a mark, or dilutes (impairs) a famous mark. A cybersquatter has the bad-faith intent to profit from the sale of the domain name. This typically occurs when a cybersquatter buys a large number of domain names that are also trademarked business names and then offers to sell them at inflated prices to the businesses.
Under the ACPA, the court may forfeit or cancel the domain name or transfer it to the plaintiff. It also may award damages, costs and attorneys fees to the plaintiff. Because cybersquatters can be difficult to find, the ACPA allows the plaintiff to file a lawsuit even when it cannot locate the original registrant of the domain name.
If the party who originally registered the domain name has a legitimate use for it, most likely that party will not be liable under the ACPA. The owner of a business whose initials are XYZ, for instance, is not necessarily obligated to give up the domain name www.xyz.com to a bigger company with the same initials.
Are there other ways to fight for a domain name?
The Internet Corporation for Assigned Names and Numbers (ICANN), a private-sector non-profit corporation, oversees the assignment of most domain names. The companies that register these names are subject to ICANN’s rules. ICANN created the Uniform Domain Name Dispute Resolution Policy (UDRP), under which a registrar will transfer, cancel or change an offending domain name if the registrar receives notice of a court order, arbitration or written agreement.
A plaintiff’s complaint must show that the domain name in question is confusingly similar, if not identical, to the mark owned by the plaintiff; the current owner of the domain name has no right to it; and the current owner acted in bad faith when registering and using the domain name.
The UDRP process is designed to be a faster alternative to traditional litigation. If the plaintiff loses the UDRP process, however, litigation is still an option.
Is a domain name dispute avoidable in the first place?
One way to avoid litigation surrounding domain names is to register as early as possible the names that are related to your business if they are available. If they are not, and you are starting a new business, it may be wise to rethink the name of the business. If a company legitimately owns a domain name that is similar to your business’s name, you may wish to make an offer to purchase the domain name. The counsel of an attorney who is experienced in intellectual property and Internet law can help you avoid problems with domain names.
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