Question

you are the owner of a registered trademark, and you just discovered that the domain name is being held hostage for a large sum of money. in approximately 300-350 words, discuss the steps that you would take to stop the cybersquatter.

Answer 1

Cyber-squatting is defined as an activity of registering, using or selling a domain name with an intention of earning profit from someone else's trademark. It involves buying the domains that use the name of existing successful businesses and selling them to earn money from those businesses. A cyber-squatting victim can do the followings:

A cyber-squatting victim in the United States has two remedies available to him:

1. He can use an international arbitration system that is created by ICANN (Internet Corporation of Assigned Names and Numbers) to either get the domain unregistered or transferred to him, or

2. He can sue the cyber-squatter under the provision of the ACPA (Anti-cyber-squatting Consumer Protection Act) and get the domain name canceled.

Using ICANN:

Since ACPA is a time consuming and expensive affair ICANN is preferred by the victims of cyber-squatting. ICANN is a faster and non-expensive way to deal with cyber-squatting issues. Its procedures are simple and do not require hiring an attorney. Any person can file his claim against cyber-squatting proving that:

i. There exist a domain name that is confusingly similar or identical to a service mark or trademark registered in the name of the complainant,

ii. The owner of the domain name posses no right over the domain name or does not have a legitimate interest in the same, and

iii. The domain name is registered by the third party and now is being used in bad faith to mint money.

Once these elements are made and proved by the complainant to ICANN, complainants will likely prevail and the domain name will be either canceled or transferred to the complainant.

Using ACPA: It allows an authorized trademark owner to sue the cuber-squatter and therefore requires an attorney to present his case. The trademark owner needs to prove the following things in order to prove his case:

i. The domain name was registered in bad faith that is to deceive,

ii. The trademark had a distinctive identity when the domain name was first registered,

iii. The registered domain name is confusingly similar or identical to the trademark the complainant owns,

iv. The trademark is registered and qualifies for protection or fortification under federal trademark laws.