Domain name disputes have become a predictable feature of brand protection in the digital age. When a cybersquatter registers a domain containing a famous trademark, the brand owner must choose between administrative proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), civil litigation under the Anticybersquatting Consumer Protection Act (ACPA), or, in some cases, litigation in a foreign jurisdiction where the domain was registered. Burger King’s decision to file a trademark infringement lawsuit in Russia to recover cybersquatted domains illustrates both the challenges and the available tools.
Burger King filed a trademark infringement lawsuit in Russia against a Moscow-based individual to recover the burgerking.su and burger-king.su domain names. The lawsuit also sought 500,000 rubles—approximately $16,000 USD at the time—as compensation for the unlawful registration of the domain names.
The choice to litigate in Russia rather than pursue a UDRP proceeding or an ACPA action in U.S. federal court reflects the practical reality of international domain disputes: the UDRP is limited to transfer of the domain and provides no monetary damages, while U.S. courts may lack jurisdiction over foreign registrants or the foreign ccTLD registry. Pursuing litigation in the registrant’s home country is sometimes the most direct path to recovery.
Understanding the differences between these options is critical for any brand owner facing a cybersquatting problem.
The ACPA, codified at 15 U.S.C. § 1125(d), provides a cause of action against anyone who registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark, with a bad-faith intent to profit. Remedies under the ACPA include:
The $100,000 statutory damages ceiling under the ACPA represents a significant advantage over the Russian litigation route, where Burger King sought only the equivalent of $16,000.
The Uniform Domain Name Dispute Resolution Policy is an administrative process administered by ICANN-accredited providers such as the World Intellectual Property Organization (WIPO) and the Forum. To succeed in a UDRP proceeding, a complainant must prove:
UDRP proceedings are typically resolved within 60 days. The cost is significantly lower than federal litigation. The remedy, however, is limited to transfer or cancellation of the domain—no monetary damages are available.
When a cybersquatter is located abroad and the domain is registered under a country-code TLD, foreign litigation may be the most practical option. However, this approach involves navigating unfamiliar legal systems, local counsel costs, and uncertainty about whether a favorable judgment will actually be enforced.
The appropriate response to a domain name dispute depends on several factors: the domain extension (.com, .net, country-code TLD), the location of the registrant, whether the squatter is using the domain or simply holding it, and the damages your business has suffered. For most brand owners, a UDRP complaint is the fastest and most cost-effective first step. ACPA litigation makes sense when the infringer is identifiable, located in the U.S., or when the amount of harm justifies federal court.
Revision Legal’s cybersquatting attorneys represent brand owners in UDRP proceedings and ACPA litigation. If someone has registered a domain containing your trademark, contact us to evaluate your options and move quickly to recover it.
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