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Options when someone is squatting on your valuable domain name

Posted by Steve Vondran | Feb 21, 2022 | 0 Comments

Attorney Steve® Domain Name Dispute Legal Essentials - Options when dealing with a domain name legal dispute

Domain name extensions ball

Options in Dealing with a Cybersquatter

Option 1:  Send a cease and desist letter demanding they stop using the domain (if it is confusingly similar to your trademark).  If it is a domain that is important to your company (ex. SoftwareCompanySF.com) for example, and you are confident you have the legal rights, then threaten a UDRP action (ex. a UDRP filing with the World Intellectual Property Organization), or threaten a lawsuit. Both of these options are discussed below.

Option 2:  File a UDRP complaint against the domain pirate with WIPO or NAF (National Arbitration Forum).  This will allow you to see the recovery of your domain name(s).  Typical time frames are 2-3 months to have the case decided by a domain name arbitration panel.

Option 3:  File a Federal Court Lawsuit under The Anticybersquatting Consumer Protection Act ("ACPA").  This can be more costly with having to hire a copyright lawyer, but unlike a UDRP action, you CAN seek damages in federal court and other remedies like an injunction.  However, if the respondent disputes your allegations, or you cannot prove them, then you can be in for a much longer fight, and you could be hit with attorney fees.

According to the American Bar Association:

"The Anti-Cybersquatting Consumer Protection Act (ACPA) was enacted in 1999 in an attempt to prevent cybersquatters from registering Internet domain names containing trademarks for the purpose of selling those domain name back to the trademark owner. Specifically, the ACPA is an addition to the Lanham Act (the primary federal trademark statute in the United States) and allows for a civil cause of action against the bad-faith registration of domain names that are either identical or confusingly similar to (or dilutive of) distinctive or famous marks. Thus, in order to receive relief under the ACPA, the name in question must have been distinctive, famous, or both at the time of the domain name's registration, and such registration must have occurred in bad faith. In evaluating this requisite bad-faith element, the ACPA puts forth nine, nonexhaustive factors that may be considered by the court, including a registrant's prior history of selling domain names and a registrant's history of registering names identical or confusingly similar to existing marks. Thus, although the ACPA contemplates the purchase of domain names for resale to established trademark owners, it does not contemplate the modern practices of registering domain names with minimal present value in the hopes that these names will become desirable, and therefore increasingly valuable, in the future."

An ACPA action is also good where you have a "Reverse Domain Name Hijacking."  This happens where you are a trademark owner (ex. CopyrightClear.com) and someone buys (CopyrightKlear.com) - a typosquatting case - and then try to sell the domain to you. Or, if they get bullish (what I call a "Trademark Pirate" and try to proactively sue you to have the domain name transferred.  In this situation, as a respondent in a UDRP action, you should consider asking the panel (1-3 panel members) to make a finding on the issue of "Reverse Domain Name Hijacking."  If they find RDNH, you may have grounds to file a Federal court lawsuit under the ACPA, but note, no precedential value is given in federal court to the UDRP case decision.  Additionally, there are different elements you will have to prove to win on RDNH in federal court.  Contact a domain name dispute lawyer or UDRP counsel to have your case reviewed.

REAL LIFE CASE EXAMPLE NOTE:  We recently had a Strike 3 BitTorrent lawsuit COMPETITOR tried to obtain one of our valuable names.  This law firm from Chicago, Illinois filed a UDRP action with WIPO.  The majority panel found they engaged in "Reverse Domain Name Hijacking."  The case was filed by The Law Offices of Jeffrey J. Antonelli and the case was brought by his trademark lawyer at Robinson-Weaver in Texas.  Watch the video reading of the final panel decision.  Anyone considering hiring a Strike 3 defense lawyer should bear these things in mind in my opinion.

Option 4:  Do nothing

I will give you another example, I have the trademark for Vondran Legal®.  I also own the domain name www.VondranLegal.com.  Some guy approaches me via email asking me if I want to buy www.TheVondranLegal.com.  Obviously, they registered their domain in bad faith and have no legitimate interest in the domain, so I could have any of the three options above.  I took option 4 and let the matter go for now anyway.  I never heard back when I asked them "have you ever studied cybersquatting law?"

Contact a Trademark and Domain Dispute Lawyer

We have been in business since 2004.  If you are a Plaintiff or Defendant (respondent or complainant) dealing with a trademark infringement or domain name disputes including cease and desist letters, trademark infringement lawsuits, WIPO or NAF UDRP arbitrations, or other related issues, call us at (877) 276-5084 for a confidential discussion.  In many (non-litigation cases) we can usually set a flat rate legal fee (a predictable one-time fee).  Call us for more details or email us through our contact form.

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337

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