In previous articles, we have talked about the fact that multiple domain names can be registered by either cyber-criminals or legitimate businesses, to prevent others from using them. But what happens when the domain name that has already been registered is one you want to use for your new business, or it is actually in conflict with your trademark?

What are your Legal Rights?

Some countries have specific laws against cybersquatting that go beyond the normal rules of trademark law. There are a number of legislations and organisations that have been set up to deal with the legalities of the online world. The main ones are:

• Internet Corporation for Assigned Names and Numbers (ICANN): A non-profit organisation that is responsible for coordinating the maintenance and methodologies of several databases, with unique identifiers, related to the namespaces of the Internet – and thereby, ensuring the network’s stable and secure operation.
• Uniform Domain-Name Dispute-Resolution Policy (UDRP): A process established by ICANN for the resolution of disputes regarding the registration of internet domain names.

Note: Complaints about .au registrant eligibility are handled by the Australian Domain Name Administrator (auDA).

• Anti-Cybersquatting Consumer Protection Act (ACPA) in the US: Enacted in 1999 to protect trademark owners from the dubious actions of cybersquatters. This federal law prohibits the practice of registering domain names (including common misspellings) that either match or closely resemble trademarked names with the intention of selling these domains to the rightful trademark owner for a profit.

Domain Name Disputes

In order to be successful in a domain name dispute there are three criteria your claim needs to meet:

1. The domain name is identical or confusingly similar to a trademark which you have the rights to.

If you have a registered trademark, it is relatively straightforward to prove, provided the disputed domain name is similar to the trademark. However, the UDRP can also be used if there is no registered trademark, if the trademark/brand name has built up substantial goodwill. If the trademark is a famous individual’s name, the fact that it is famous does not automatically prove goodwill. The name should have been used in trade or commerce and must have acquired a secondary meaning so that it is associated with particular goods or services. Generally, to prove goodwill you would need to provide evidence for things like sales numbers and PR coverage.

2. The registrant (i.e. squatter) does not have any rights or legitimate interests in the domain name.

If the squatter has not used (or made preparations to use) the website to offer goods or services, has no trademark/rights in the name, and is not using the site for a legitimate reason, then they will have no rights or legitimate interests in the domain name. For example, if the website attempts to misleadingly divert consumers, then the registrant will have no legitimate interest.

3. The domain name has been registered and is using it in “bad faith”.

By “bad faith”, we mean that a person has only registered the domain name to:

• Sell it to the person who owns the trademark/right
• Prevent the person who owns the trademark/right from using it
• Disrupt a competitors business
• Attract people to the website because of confusion with the trademark/right.

As mentioned in our Cybersquatting – What is it? – Part 1 article, by doing a search using the Whois Lookup tool, you can obtain information on who set up and paid for the domain, and which registrar sold it to them. Keep in mind that some registrars offer an additional service to their clients, which, for an additional charge, allows them to hide Whois details from public view. Also, particularly in the case of a cybersquatter, false registration information may have been provided. These obstacles may cause difficulties when trying to lodge a complaint and you may be left with only one course of action, which is to contact the registrar company directly.

Another thing to remember is that, not all domain name registrations can be disputed. If someone registered the domain XYZ.cn, the Trademark Company XYZ might try to get the domain deregistered. However, if there is no evidence matching the three criteria needed for a successful claim (listed above), it is not likely that the site can be taken down. Just because the name exists, doesn’t mean it can be taken down. Only once there is something on the website that is similar to your business, can a complaint be put into the Registrar to say that the website is too close to your website.

Tune in next week for the final chapter of our Cybersquatting articles, where we explore what to expect in the future of Domain Names.