As the senior user of a trademark, you can bring a trademark infringement lawsuit against the
domain name owner if your trademark is distinctive and the use of the domain name creates a
likelihood of customer confusion. As part of this suit, you can ask the court to require the owner of
the domain name to transfer it to you and you may also be able to recover damages and attorney's
fees. Of course, going to court is time-consuming and may cost you more than you'll recover from
the defendant. You'll want to carefully weigh the possible benefits against the costs.
Things can get confusing if the trademark you've been using isn't exactly the same as your
proposed domain name. If it's almost the same, trademark law lets you maintain ownership. But
you can lose your seniority if there are significant differences.
For instance, in one recent case, a
company that owned the trademark "The Movie Buff's Movie Store" registered the domain name
moviebuff.com. Another company, which had been using the actual mark "moviebuff" on a CDROM
containing movie information, was prevented from using moviebuff.com as a domain name.
The "Movie Buff's Movie Store" mark had been in use before the other company started using
moviebuff on its CD-ROMs. Who was the senior user of the moviebuff trademark? The U.S. District
Court ruled that the company using "The Movie Buff's Movie Store" was the senior user because it
had used that name before the other company used moviebuff. But an appeals court reversed,
ruling that "The Movie Buff's Movie Store" was an entirely different mark than moviebuff, and
ordered the "Movie Buff's Movie Store" company to surrender the domain name to the moviebuff
company.
An Anti-Cybersquatting Lawsuit
If you own your name and find that someone or some business is holding it hostage as a domain
name until you pay a large sum for it, you may be the victim of cybersquatting. You can sue to get
your domain name and possibly some money damages under a 1999 federal law known as the
Anti-Cybersquatting Consumer Protection Act. Because suits must be filed in federal court, you
almost certainly will need to hire a lawyer.
Under the Act, cybersquatting means registering, trafficking in or using a domain name with badfaith
intent to profit from the goodwill of a mark belonging to someone else. It refers to the practice
of buying up domain names reflecting the names of existing businesses with the intent of selling the
names for a profit back to the businesses when they go to put up their websites.
The Origins of Cybersquatting
The practice that's come to be known as cybersquatting originated at a time when most businesses
were not savvy about the commercial opportunities on the World Wide Web. Some entrepreneurial
souls registered the names of well-known companies as domain names, with the intent of selling
the names back to the companies when they finally woke up. Panasonic, Fry's Electronics, Hertz
and Avon were among the "victims" of cybersquatters. Opportunities for cybersquatters are rapidly
diminishing, because most businesses now know that nailing down domain names is a high priority.
Recognizing Cybersquatting
How do you know if a cybersquatter has your name? As a general rule, you should first see
whether your proposed but unavailable domain name takes you to a legitimate website. Simply
enter www. and the domain name in your browser.
If the domain name takes you to a website that appears to be functional and reasonably related in
its subject matter to the domain name, you probably aren't facing a case of cybersquatting.
However, you may have a case of trademark infringement.
But if your browser produces any of the following results, and you are a famous individual or are
using your existing business name as your proposed domain name, you may have a case of
cybersquatting on your hands:
•You get a "can't find server" message
•You get an "under construction" page, or
•You get a page that appears to have no relationship to the meaning of the domain name. For
instance, if you type the well-known Nolo trademark WillMaker into your browser
(willmaker.com), you get Shells' Ragtown Political Art Studio. (Yes, Nolo.com appears to have
its own cybersquatter problems.)
Although each of these results suggests the possibility of cybersquatting, there may also be an
innocent explanation for the lack of a functioning website, especially if the website is still under
construction. It's very easy and inexpensive to register or reserve domain names but more difficult
to put up the actual website. You can reserve a domain name for two years, so the fact that a
website is not up, even months after the name was reserved or registered, does not necessarily
mean that the registrant doesn't have perfectly legitimate plans to have a website in the future.
Before jumping to any conclusions about a proposed domain name that is not available, contact the
registrant. Find out whether there is a reasonable
explanation for the use of the name, or if the registrant is willing to sell you the name at a price you
are willing to pay.
Sometimes paying the cybersquatter is the best choice. Even though Congress has provided a
remedy against cybersquatting, it requires a federal court lawsuit and, almost by necessity, lawyers.
It may be a lot cheaper and quicker for you to come to terms with a cybersquatter than to stand on
your rights and invoke the power of the federal court with its attendant costs and delay. Although
you may be able to recover your costs and attorney fees if you win, there is no guarantee; it's
completely up to the judge.
What You Must Prove to Win
If somebody else has already registered your business name or other mark as a domain name, you
can sue the registrant in federal court to have the domain name transferred to you. To win, you'll
have to prove all of the following:
•The registrant had a bad-faith intent to profit from your mark (see section c, below),
•Your mark was distinctive at the time the domain name was first registered
•The domain name is identical or confusingly similar to your mark, and
•Your mark qualifies for protection under federal trademark laws that is, you were
the first to use the mark in commerce.
You don't have to show that customers are likely to be confused. This means you can sue the domain name registrant
even if the website sells products or services that are completely unrelated to yours.
Bad Faith
To win a lawsuit based on the Anti-Cybersquatting Act, you must show bad faith on the part of the
domain name registrant. This will not be easy. There is no bad faith if the person who registered the
name had reasonable grounds to believe that the use of the domain name was a fair use or
otherwise lawful. If a cybersquatter is able to show a reason for registering the domain name other
than to sell it back to the trademark owner, then the courts will allow him to continue.
If you can answer yes to any of the following questions, then there may be no bad faith:
•Does the domain name registrant have an arguable claim to the name because of the
registrant's existing trademark rights? There may be concurring uses of the same name that are
noninfringing, such as the use of the "Delta" trademark for both air travel and sink faucets.
Similarly, the registration of the domain name "deltaforce.com" by a movie studio would not tend to
indicate a bad-faith intent on the part of the registrant to trade on Delta Airlines' or Delta Faucets'
trademarks.
•Does the domain name identify the registrant as an individual? A person is entitled to his or
her own name, whether in business or on a website. Similarly, a person may bear a legitimate
nickname that is identical or similar to a well-known trademark, such as in the well-publicized case
of the parents who registered the domain name "pokey.org" for their young son who goes by that
name.
•Has the registrant ever used the domain name in connection with the offering of goods or
services? If the registrant has a commercially sensible reason for using the domain name (other,
that is, than selling it back to you), there is probably not bad faith.
•Is the registrant legally using the mark on the website itself? It's legal to make noncommercial
or fair uses of others' marks online, such as in comparative advertising, comment, criticism, parody
or news reporting. The mere fact that the domain name is used for one of these purposes would
not alone establish a lack of bad faith.
Congress has also provided us with some indicators of the bad faith necessary to prove a
cybersquatting charge. If the answer to any of the following questions is yes, the court may be
inclined to find that the registrant is acting in bad faith, or did so when the domain name registration
was made.
•Is the registrant using the domain name to divert users from your site to another site where
customer confusion is likely to result or your trademark's reputation for quality is harmed?
In other words, is the domain name being used in a way that negatively affects your website or the
value of your trademark?
•Has the registrant offered to sell the domain name to you without having ever legitimately
used the domain name on a commercial website?
•Has the registrant provided false or misleading contact information to the domain name
registry or failed to keep this information up to date?
•Has the registrant registered multiple names that are the same or confusingly similar to
distinctive marks? In other words, is there an apparent pattern of cybersquatting?
•Is the mark in question famous or highly distinctive? The more distinctive or famous the mark,
the more the court is likely to conclude that the registrant acted in bad faith.
It's the Facts That Count
In one of the first cases decided under the federal anti-cybersquatting law, a court ruled that a
business that had used another business's trademark as a domain name had acted in bad faith and
was a cybersquatter.
In 1985, Sportsman's Market (Sportman's) registered the trademark Sporty's, which it used on its
aviation products catalog. Ten years later, Omega Engineering decided to sell aviation products
and registered the domain name sportys.com. Nine months later, Omega created a wholly-owned
subsidiary called "Sporty's Farms" for the alleged purpose of operating a Christmas tree farm, and
sold the sportys.com domain name to it. Sportsman's learned of the registration, sued to obtain the
domain name for its own use and won in U.S. District Court. Sporty's Farms appealed the trial
court's decision.
During the appeal, Congress passed the Anti-Cybersquatting Act, and the appeals court applied it
to this dispute. The court noted that the particular facts in this case didn't mesh well with the criteria
set out in the Act for determining bad faith, a necessary ingredient for a successful cybersquatting
charge. However, the court also noted that the Act allowed it to go beyond those criteria and, under
the unique facts of this case, found that Omega had acted in bad faith. Sportsman's got the domain
name sportys.com.
What You Can Sue For
Under the Anti-Cybersquatting Act, victorious cybersquatting victims can ask the court for an
injunction against the cybersquatter, and for monetary damages.
Injunctive relief is a court order requiring the domain name registrant to transfer the domain name
to the plaintiff. Injunctive relief is available whether the cybersquatting occurred before or after the
Act took effect.
Recovering Your Good Name
If a cybersquatter has registered your personal name or a name that is "substantially or
confusingly similar" to it you can sue in federal court to have the name transferred back to you.
However, you will have to prove that the domain name registration was done with the specific intent
of selling it back to you or to a third party for a profit. As a general rule, this will only work for
famous people and politicians, since it's unlikely that the name would be registered with an intent to
make a profit unless it belonged to someone well known.
If you win your lawsuit against the cybersquatter, you are also entitled to recover three times the
total amount of money you lost because of the cybersquatter, plus the profits realized by the
cybersquatter from his or her illegal activity, plus your court costs. In exceptional cases, you can
also be awarded attorney's fees. However, cybersquatting usually doesn't cause actual monetary
losses (though it does cause you massive inconvenience). Nor does it generate profits, unless you
paid the squatter. So, at your option, the Court can award you "statutory damages" of $1,000 to
$100,000. Since statutory damages do not require proof of any type, they offer you a realistic
opportunity to recover money as well as the domain name.
Importantly, money damages (both actual and statutory) may only be recovered for cybersquatting
activity that occurred after November 29, 1999. For instance, if the cybersquatting activity
complained of is the registration of the name, and the registration occurred before November 29,
1999, you can't recover money damages. However, you can recover for other prohibited activities
that occurred after November 29, 1999. For example, even if the domain name was registered before November 29, 1999, you can still recover money damages if the domain name was
trafficked in (for instance, offered for sale) or used after November 29, 1999.
If You Can't Find the Cybersquatter
You may run into trouble when you try to sue a cybersquatter, because you don't have a physical
address to which to send the documents (a complaint and summons) that get the lawsuit started. A
lawsuit generally can't begin until the person or business is properly notified that it's being sued.
And you can't send that notification by email. Some cybersquatters provide inaccurate contact
information to the domain name registration service, making them next to impossible to track down.
If you can convince the court that you've been diligent in trying to locate the cybersquatter, but have
failed to do so, the court will order the domain name registration to give you the name. This is called
an "in rem" action. | 
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