Rescue Your Domain from Trademark Trespassers
It’s frustrating when the domain name you want has already been registered. You spent ages dreaming up the perfect name for your website, business, or blog, only to find someone else got in there ahead of you and snapped it up—aargh!
When this happens, there are two roads available. The first is to try and buy the domain from the current owner.
A second option that some companies choose is to call their lawyer. They ask, “Is there any way I can get this domain from the current owner because they’re cybersquatting?”
The answer is usually ‘no’. It’s only considered cybersquatting in limited circumstances.
Cybersquatting Defined
Cybersquatting refers to registering domain names in bad faith to take advantage of a company’s trademark. For example, registering a domain name with Coca-Cola in it.
Registering domain names with plans to sell them to someone else isn’t cybersquatting unless it targets a specific company and its trademark. In fact, many people register generic or descriptive domain names with hopes of selling them. These domain investors don’t target trademarks and therefore are not cybersquatting.
Making a Cybersquatting Claim
There’s an easy way to recover a domain name that is cybersquatted: the Uniform Domain Name Dispute Resolution Policy (UDRP). Everyone who registers a .com, .net, .org and some other domain names agrees to be bound by UDRP.
When someone makes a claim of cybersquatting using UDRP, a panel of experts will determine if the case has merit. If the panel determines that it is a case of cybersquatting then it will order the domain name to be transferred to the owner of the trademark.
Five organizations handle UDRP cases. They typically charge about $1,000-$1,500 to review the facts. Fees can be higher depending on the circumstances. For example, fees are increased if the owner of a domain name decides he or she wants a three-person panel to review a case (rather than just one person).
UDRP is a faster and cheaper way to resolve a cybersquatting dispute than turning to the courts. However, the United States also has the Anticybersquatting Consumer Protection Act if a company would prefer to file a lawsuit.
What You Have to Prove
In order to win a UDRP case, you have to prove three things.
- The domain name matches or is confusingly similar to your trademark.
There are two types of trademarks you can use in a UDRP to prove this.
The first is a registered trademark filed with your government organization, such as the U.S. Patent and Trademark Office. Note that a pending application does not count; the registration must be granted.
The second is a “common law trademark”. This basically means you have rights in the term that aren’t registered with a government authority. UDRP panels require a lot of supporting evidence for anyone claiming common law rights in a mark.
Panels also want supporting evidence of rights when a trademark is on the supplemental register or is a design mark (such as a logo) rather than just text.
2. The owner of the domain doesn’t have rights or legitimate interests in the domain.
You need to show that the person or company that owns the domain doesn’t have a reason to own it other than to infringe on your rights. Some of the ways a domain owner can show rights or a legitimate interest include:
- The name matches the owner’s personal name
- The owner has a trademark or common law rights to the domain
- The owner created a website on the domain that does not infringe your trademark
- The name is generic or descriptive and was registered for resale but not to infringe your trademark
3. The domain was registered and used in bad faith.
This is a key element that is often the most disputed part of a cybersquatting case.
Note the word “and” in this part of the UDRP. You have to show that the domain registrant registered the domain in bad faith after you obtained your trademark rights.
If the owner registered the domain before you had trademark rights, then it’s not cybersquatting because there’s no way they could have targeted you when they registered the domain. This means that if you come up with an idea for a new name today and someone else owns it, that person isn’t cybersquatting.
Even if your rights predate the domain registration, you need to show that the registration targeted your company. If the domain is a dictionary word or lots of companies use it, it will be difficult to prove that your brand was targeted.
UDRP Panels often consider how the domain was used. Keep in mind that your trademark is only for certain goods or services. If you have a trademark for “Blue” for a restaurant, and the domain Blue.com is being used for something that’s not a restaurant, then the owner isn’t cybersquatting on your brand.
There’s No Going Back
Before you file a dispute under UDRP, keep in mind that it opens you up to some liability.
Filing a case in abuse of the policy is called reverse domain name hijacking. Panels often decide it’s reverse domain name hijacking if you file a bad case, such as one in which your trademark rights came after the domain owner registered the domain.
There’s no financial penalty if a UDRP panel finds you guilty of reverse domain name hijacking. However, the domain owner can sue you in court and get a penalty of up to $100,000.
Domain name owners can file a lawsuit even without a panel finding of reverse domain name hijacking. Court decisions overrule UDRP panel decisions–and can cost you a lot of money.
Another reason to be cautious is that losing a UDRP means it will be much more difficult to negotiate a purchase from the domain owner.
A common occurrence is that a company tries to buy a domain name but doesn’t like the asking price. It files a UDRP and loses.
As you can imagine, the domain owner probably won’t sell for his original asking price after a company tried to take the domain through UDRP!
The Bottom Line with Cybersquatting Claims
If you think you want to challenge someone’s domain ownership, it’s crucial that you take the time to understand what qualifies as cybersquatting and what doesn’t. Consult a competent attorney that specializes in UDRP before filing a case.
If you are starting a new business then you don’t have a cybersquatting claim. So consider finding an available domain name or buying a domain name in the aftermarket.
Thanks for this great article. Learnt something new today
Hi,
Thanks for information….
Would it be cybersquatting if someone buys a domain similar to yours – say your domain has abbreviations and they bought the full name – and puts up a damaging site that makes false claims against your business?
I wouldn’t call that cybersquatting. I would call it fraud at the very least, and could be trademark infringement or in violation of other laws depending on the domain and how it’s being used. If this is happening to you or someone you know, you should contact the website’s hosting provider and domain registrar and report it as abuse, and possibly consult with an attorney.
This issue also highlights a really good reason to register related domains (misspellings, abbreviations, other domain extensions beyond .com, etc.) so this can’t happen, as we mention in this article: https://www.namecheap.com/blog/avoid-brand-confusion-domain-name/.
Thank you.
It was much easier to register related domains before the recent TLD explosion.
I was a reseller for a software product XYZ (name changed to keep this discussion generic) and had created an add-on for it that was named XYZ Template, with a matching domain name xyztemplate.com. In 2010 when my reseller agreement ended, the company told me I could not use that domain name because they owned the trademark to their product XYZ, so I changed my product name and domain to a variation that did not include xyz.
I’ve always felt it was unfair, and that there was no confusion in the market – they developed and sell XYZ, and I create and sell a template for helping users of XYZ do their work better and faster. (I am a big proponent of the software.)
In recent years I have gradually started developing other websites with XYZ included, such as xyzuser.com, xyztraining.com and xyztutorials.com; they have not said anything to me even though they know that I continue to provide training and tutorials for XYZ users.
I still own the domain xyztemplate.com and am thinking of reinstating it after reading your article. Can you tell me whether the company that makes XYZ has any legal right to stop me from using this name?
That’s a frustrating situation to be sure, but you might not have much recourse. If XYZ company holds a trademark on the XYZ brand, you’re probably out of luck, and trying to go around it could end up costing you a lot in legal fees. I don’t know what company you’re referring to, but I know for a fact that WordPress, as an example, is required to defend that trademark or face losing it, and this comes up constantly. Anyone who tries to use a domain like WordPresstutorials.com (anything with “WordPress” in it) without a license from the trademark holder will have to take it down or face legal action. The same thing is true for every other trademark holder. Companies with trademarks have to spend a lot of resources protecting their trademark lest they fall into generic usage and the trademark gets canceled.
You might find this related article interesting: https://www.consumerreports.org/consumerist/15-product-trademarks-that-have-become-victims-of-genericization/
At any rate, I would definitely advise you to seek out legal advice on this matter before proceeding.
Thanks for the comprehensive article. But my only question is if I have been the domain and prove either one of the points to be wrong then will the judgment be on my favor?
It’s possible, but ultimately it would be up to the findings of the UDRP.