Cybersquatting
Summary: If someone has registered your trademark as a domain name with the intent to profit from it, you could be dealing with a case of “cybersquatting.” As the trademark holder, you can sue in Federal court for cybersquatting under the Anticybersquatting Consumer Protection Act, passed in 1999.
Cybersquatting refers to the practice of registering someone else’s trademark as a domain, and then charging the trademark owner an exorbitant price in order to transfer the domain name to the trademark owner. Cybersquatting is considered a form of trademark dilution or trademark infringement, which is forbidden under the Lanham Act, which codifies the United States trademark laws.
Trademark dilution is the use of a trademark — usually a famous mark — by someone other than its true owner that impairs the mark’s distinctiveness or causes consumer confusion. The Federal Trademark Dilution Act of 1995 (FTDA) forbids trademark dilution. For example, Tiffany & Company owns their “Tiffany” trademark for jewelry and luxury household accessories. If someone were to apply the Tiffany mark to a luxury line of shotguns, then a reasonable consumer might be confused about whether or not Tiffany had expanded its line of luxury goods. Continued use of the mark would likely dilute the Tiffany brand, and cause an association with the name “Tiffany” with luxury shotguns rather than luxury jewelry.
Trademark infringement is any use of a trademark which is “confusingly similar” to the mark of another. If an average consumer would be confused as to the source of the goods or services — that is, confused about which company makes the goods — then the “confusingly similar” test is met, and the mark is considered to infringe. For example, if a jewelry company were to register the trademark “Tiphany” for jewelry, this would be an infringement of Tiffany’s mark, because the goods are exactly the same, and the marks sound exactly the same when spoken, thus confusing the average consumer. (It would also, incidentally, be a dilution, because Tiffany is a famous mark.)
Under the Anticybersquatting Consumer Protection Act, a trademark owner has legal recourse against anyone who registers a domain name with a bad faith intent to profit from the trademark owner’s trademark, or registers a domain name which is confusingly similar to a trademark or which dilutes a famous mark. Not sure if your mark is famous? Here’s a good test: If your trademark is a household word in your industry, then it’s probably famous. If not, then it’s probably not famous.
Obviously, the ACPA is a remedy only for violations here in the United States, because it is an American law applicable to American defendants. What if your mark is being cybersquatted by someone from China? A better way to deal with that situation may be through a UDRP claim (link to UDRP page) because all top-level domain name registrars are bound by those terms, and all registrants agree to them as a condition of registering the domain name.
Bottom Line: Depending upon where your naughty domain name registrant is located, a remedy under UDRP might be a better option than a remedy under the Anticybersquatting Consumer Protection Act or the Federal Trademark Dilution Act. UDRP provides a better remedy for defendants outside of the United States in addition to a speedy way to get naughty registrants to hand over a domain name that rightfully belongs to you.
