Cybersquatting is the practice of registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. It is a form of unfair competition and parasitism, and it can have a serious impact on businesses and consumers alike.

Legal Framework

Cybersquatting is illegal in most jurisdictions around the world. In the United States, it is prohibited by the Anti-Cybersquatting Consumer Protection Act (ACPA). The ACPA allows trademark owners to sue cybersquatters for injunctive relief (i.e., an order to transfer or cancel the domain name) and damages.

Proof of Cybersquatting

To win a cybersquatting lawsuit, a trademark owner must prove the following elements:

• The defendant registered, trafficked in, or used the domain name with bad faith intent to profit from the goodwill of the plaintiff’s trademark.
• The domain name is identical or confusingly similar to the plaintiff’s trademark.
• The plaintiff’s trademark was distinctive at the time the defendant registered the domain name.

Bad Faith Intent

Bad faith intent can be inferred from a number of factors, including:

• The defendant’s use of the domain name to divert consumers to the defendant’s website or to sell goods or services that are competitive with the plaintiff’s goods or services.
• The defendant’s offer to sell the domain name to the plaintiff for a high price.
• The defendant’s registration of multiple domain names that are identical or confusingly similar to the plaintiff’s trademark.

Remedies

If a trademark owner is successful in a cybersquatting lawsuit, they can obtain the following remedies:

• An order to transfer or cancel the domain name.
• Damages, including lost profits and statutory damages of up to $100,000 per domain name.

Protecting Your Trademark

There are a number of steps that businesses can take to protect their trademarks from cybersquatting, including:

• Registering their trademarks with the appropriate trademark office.
• Monitoring the internet for unauthorized use of their trademarks.
• Using domain name registration services that offer trademark protection features.
• Taking action against cybersquatters by filing lawsuits or using other dispute resolution procedures.

Real-Life Examples

Here are some real-life examples of cybersquatting:

• In 2011, Nintendo recovered the domain name supermario.com after it had been used for 15 years by a cybersquatter.
• In 2014, the owner of the trademark “Apple” sued a cybersquatter who had registered the domain name apple.com.cn. The cybersquatter was using the domain name to redirect visitors to a website that sold counterfeit Apple products.
• In 2019, a cybersquatter registered the domain name disneyplus.com and then offered to sell it to Disney for $250,000. Disney refused to pay, and the cybersquatter was eventually ordered to transfer the domain name to Disney.

Alternative Dispute Resolution Procedures

In addition to lawsuits, trademark owners can also use alternative dispute resolution procedures to recover domain names from cybersquatters. One popular alternative dispute resolution procedure is the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP is an administrative procedure that is administered by the World Intellectual Property Organization (WIPO).

To file a UDRP complaint, a trademark owner must prove the following elements:

• The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
• The respondent has no rights or legitimate interests in respect of the domain name.
• The domain name has been registered and is being used in bad faith.

If the complainant is successful in a UDRP proceeding, the domain name will be transferred to the complainant.

Steps to Protect Trademarks

There are a number of steps that businesses can take to protect their trademarks from cybersquatting, including:

• Registering their trademarks with the appropriate trademark office.
• Monitoring the internet for unauthorized use of their trademarks.
• Using domain name registration services that offer trademark protection features.
• Taking action against cybersquatters by filing lawsuits or using alternative dispute resolution procedures.

Cybersquatting is a serious problem, but there are a number of legal remedies available to trademark owners. By taking steps to protect their trademarks, businesses can reduce their risk of becoming victims of cybersquatting.

Additional Information

The following are some additional resources on cybersquatting law and dispute resolution procedures:

• World Intellectual Property Organization (WIPO): https://www.wipo.int/amc/en/domains/
• Internet Corporation for Assigned Names and Numbers (ICANN): https://www.icann.org/resources/pages/help/dndr/udrp-en
• United States Patent and Trademark Office (USPTO): https://www.congress.gov/106/bills/s1255/BILLS-106s1255es.pdf