If you discover that someone or some business has registered an internet domain name using your personal name without authorization, you have encountered an unlawful form of cybersquatting and domain-name squatting. Many famous personalities have battled against this form of cyberbullying and this internet domain name abuse can continue long after a famous personality has passed. Not too long ago, the estate of singer Patsy Cline discovered someone had registered Patsycline.com without authorization. See media report here. When this happens, experienced and dedicated internet attorneys will need to pursue domain squatting litigation against the culprits. Broadly speaking, there are two litigation options:

• (1) Bringing claims under the Anti-cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d) and
• (2) Initiating an arbitration proceeding with the the Internet Corporation for Assigned Names and Numbers (“ICANN”) under the Uniform Domain-Name Dispute Resolution rules (generally called a “UDRP” action) — ICANN is an international nonprofit organization that governs domains and domain names (see here)

If your personal name has been cybersquatted, consulting with domain name litigation lawyers will provide specific guidance on your individual case. We, here at Revision Legal, are experts in cybersquatting and domain name issues and can help.

Generally speaking, there are some advantages and disadvantages to each type of proceeding that can be identified. The main advantage for claims filed in federal court under the ACPA is the ability to collect substantial money damages. It is possible to obtain upwards of $100,000 in statutory damages under the ACPA (along with an Order transferring the domain name from the cybersquatter). An ACPA litigation proceeding may be the best option if the person or entity that has cybersquatted on your personal name has many assets — “deep pockets” — and has profited from use of your personal name. Also, it may be the best option if there is a need to “send a strong message” to other potential cybersquatters. Another advantage is the ability to appeal an adverse ruling to a higher court in the traditional manner.

The main disadvantages of initiating ACPA litigation are higher cost, timing and higher legal standard. Higher costs include filing fees and litigation expenses. This may not be a problem for highly paid celebrities, but may be a significant barrier for persons of more modest means. In terms of timing, federal ACPA litigation can take years to complete (although injunctive relief can, sometimes, be accomplished more quickly). To prevail on an ACPA claim, there are several legal elements that must be proven (more than are required for a UDRP proceeding).

As suggested, the main advantages of UDRP litigation are speed and less cost. A UDRP proceeding is an arbitration. As such, the proceedings are much shorter, with only a limited amount of discovery exchanged between the parties. A UDRP proceeding might be resolved in as little as a few months. In addition, the legal standard is lower for success in a UDRP proceeding.

However, the UDRP panel is only empowered to order transfer of the domain name and has no authority to award money damages. This is a facial disadvantage, but also can be seen as an advantage of sorts if the entity that has cybersquatted on your personal name has few assets. In those circumstances, a UDRP complaint may be the best and speediest option. Unless the goal is to “send a strong message,” there is little point in obtaining a large money judgment if the judgment cannot be collected. The other disadvantage of a UDRP claim is the inability to take a meaningful appeal in the event of an adverse decision.

For more information, call Revision Legal’s experienced internet attorneys today for assistance. You can contact us through the form on this page or call (855) 473-8474.

Establishing Rights in a Personal Name Under the ACPA

The Anti-cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), protects personal names that are used in commerce in a manner that gives rise to trademark-like rights, as well as names with sufficient fame to constitute a mark. Courts have recognized that celebrities, public figures, and even private individuals who have used their personal names in commerce can bring ACPA claims against domain squatters. The statute requires that the cybersquatter registered, trafficked in, or used a domain name with a “bad faith intent to profit” from the name. Courts look at nine specific bad faith factors listed in the statute, including: whether the registrant has trademark rights in the name; whether the domain name consists of the person’s legal name; whether the registrant offered to sell the domain to the person for a profit; and whether the registrant has engaged in a pattern of registering names to prevent their legitimate owners from using them.

The in rem provisions of the ACPA — allowing suit against the domain name itself — are particularly valuable in personal name cybersquatting cases where the squatter has hidden their identity, resides abroad, or cannot be personally served. Under 15 U.S.C. § 1125(d)(2), a plaintiff who cannot obtain personal jurisdiction over the cybersquatter may bring an in rem civil action in the federal district court where the domain name registrar is located, seeking forfeiture, cancellation, or transfer of the infringing domain name.

UDRP Proceedings for Personal Name Domains

ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP) provides a faster and less expensive alternative to federal litigation for recovering cybersquatted domain names. A UDRP complainant must prove three elements: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the registrant has no legitimate rights or interests in the domain name; and (3) the domain name was registered and is being used in bad faith.

The personal name context creates a threshold challenge for UDRP proceedings: the complainant must establish trademark or service mark rights in their personal name, which requires that the name be used in commerce in a manner that creates consumer association between the name and a product or service. Celebrities, authors, public speakers, and business professionals who have built brands around their personal names can typically satisfy this requirement. UDRP panels have ordered transfer of domains incorporating personal names in hundreds of cases involving both famous and lesser-known individuals, provided the trademark-like rights in the name are adequately established.

Post-Recovery Steps: Protecting Your Name Domain Long-Term

After recovering your cybersquatted personal name domain, several steps help ensure you retain control and prevent future squatting. Register your personal name as a federal trademark if you have not already done so — federal registration creates a public record of your rights and significantly strengthens any future ACPA or UDRP claim. Register variations and common misspellings of your name as domains, particularly the .com, .net, and .org versions. Enable Registry Lock on your domain to prevent unauthorized transfers. And ensure that your domain registration contact information is current and that you have 2-factor authentication enabled on your registrar account and associated email.

Contact Revision Legal if someone has cybersquatted on your personal name or the name of a deceased loved one. Our internet and trademark attorneys handle both ACPA federal court litigation and UDRP arbitration proceedings and will advise you on the fastest and most cost-effective path to recovering your domain.