Options for Combating Infringing Domain Names

As Internet attorneys that regularly assist in domain name disputes, we are often what is the best method of combatting infringing domain names.

Trademark Owner’s Options

Trademark owners typically have two main options to combat domain names using their marks: filing a UDRP or domain dispute or filing a federal lawsuit under the Anticybersquatting Consumer Protect Act or ACPA.

Cybersquatting

To establish a claim for cybersquatting, the trademark owner must prove the following three elements:

1. The defendant registered in, trafficked, or used a domain name;
2. That is identical or confusingly similar to a distinctive or famous mark;
3. With a bad faith intent to profit.

If these elements are established, the plaintiff may recover actual damages or statutory damages in the amount of $100,000 per infringing domain name. Further, the court may award cancellation or transfer of the domain name to the plaintiff.

While there is significant upside in terms of monetary damages, ACPA claims are typically time consuming and expensive to litigate. However, some cases may present a fact pattern that permits Revision Legal to take the case on a contingency basis. As with any civil federal lawsuit, the parties can engage in lengthy discovery including depositions. The cases are typically decided by motion or live trials.

Domain Disputes

The elements for a UDRP or domain dispute action are substantially similar to the ACPA. Specifically, to prevail in a UDRP proceeding, the plaintiff (or complainant) must prove:

1. The respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. The respondent has no rights or legitimate interests in the domain name;
3. The respondent registered and is using the domain in bad faith.

Unlike the ACPA, the UDRP does not provide the opportunity for money damages. If the complainant prevails in a UDRP proceeding, the sole remedy is transfer of the domain. However, the benefit of the UDRP is the cost to file the claim is substantially lower and the final decision will be reached much faster.

The UDRP or domain dispute process is likely the best vehicle to use when a trademark owner finds domain names using his or her mark and quick recovery of those domains is the highest priority.

Conclusion

The choice between a UDRP and ACPA proceeding involves the weighing of multiple factors. Has the defendant acted in demonstrable bad faith? Is the defendant collectable? Does the plaintiff had the appetite to start a federal lawsuit? How strong is the underlying trademark? 

Trademark owners are best advised to seek the assistance of counsel to determine the best path to protect their trademark rights. To contact Revision Legal, simply complete the forms on this page or call 855-473-8474.

Key Differences Between UDRP and ACPA Claims

The choice between a UDRP proceeding and an ACPA federal lawsuit involves more than cost and speed. The legal standards differ in important ways. The UDRP requires proof that the domain was registered and is being used in bad faith — a conjunctive standard requiring both bad faith registration and bad faith use. If a domain was innocently registered and is only now being used in a harmful way, a UDRP complaint may fail even though an ACPA claim would succeed because the ACPA focuses on trafficking and use in bad faith without requiring that the original registration itself was bad faith.

The ACPA also provides an in rem cause of action against the domain name itself, 15 U.S.C. Section 1125(d)(2), available when the registrant cannot be located or is outside the court’s personal jurisdiction. For international cybersquatters — a common scenario — the in rem action is often the only practical federal court remedy, allowing the trademark owner to obtain a court order directing the registrar to transfer the domain without needing to serve a defendant in a foreign country.

Domain Name Registration Strategies to Prevent Cybersquatting

The best option for combating infringing domain names is preventing cybersquatting before it starts. Trademark owners with established brands should register not only the primary domain but also: common misspellings and typosquatting variants; domains in all major TLDs (.com, .net, .org, .co, and country-code TLDs for markets where the brand operates); brand-plus-generic-term combinations; and the brand name with negative or complaint terms to prevent gripe-site cybersquatting. Many registrars offer monitoring services that alert trademark owners when new domains containing their mark are registered.

Using the Trademark Clearinghouse for New TLD Launches

The Trademark Clearinghouse (TMCH), operated under ICANN’s oversight, allows trademark owners to record their verified trademarks in a central database that interacts with new generic top-level domain (gTLD) launches. TMCH registrations provide two key benefits. First, they entitle the mark holder to a Sunrise Period for new gTLD launches, during which trademark owners may register their mark as a domain in the new TLD before general registration opens to the public. Second, they trigger a Claims Service notification: when anyone attempts to register a domain that matches a TMCH-recorded trademark during the first 90 days of a gTLD launch, both the trademark owner and the registrant receive notice, allowing the trademark owner to evaluate the registration and take action if warranted.

When Demand Letters and Voluntary Transfer Make Sense

Before investing in formal UDRP or ACPA proceedings, trademark owners should consider whether a well-crafted demand letter can achieve a voluntary domain transfer. Many cybersquatters, when confronted with a credible legal demand that articulates clear trademark rights and specific legal exposure, will voluntarily transfer the domain to avoid the cost and embarrassment of formal proceedings. Demand letters are most effective when sent by counsel, cite specific statutes, identify the legal theories and remedies available, and set a firm response deadline. Voluntary transfers can be documented in a short settlement agreement that includes a nominal payment for the transfer, a representation that the transferor has no other infringing domains, and a mutual release of claims.

Contact Revision Legal’s Domain Dispute Attorneys

Combating infringing domain names requires an understanding of all available options and the strategic judgment to select the right tool for the specific fact pattern. Revision Legal’s domain dispute attorneys handle domain-related matters for businesses of all sizes, from single-domain disputes to large-scale cybersquatting campaigns involving dozens of infringing registrations. Contact us today to discuss your options.