Options for Combatting 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.