Who owns the rights to a name? Natural instinct leads many to believe that the bearer of a name owns it. Unfortunately, in the world of trademark and cyber-squatting law, that isn’t always the case. Some celebrities have taken proactive approaches to protect the image that surrounds their names. However, website domains are a different beast. Largely, the law prohibits cyber-squatting on domains that actual companies use.
What is cybersquatting?
When the Internet first started getting popular, people and companies commonly bought variations of domain names that they had no real intention of ever using, in order to sell the domains (hopefully at a profit) to companies that wanted to use them. Since this Internet explosion, the court has considered this practice unlawful and dubbed it cybersquatting.
While the practice of bad-faith cybersquatting is prohibited, it’s harder to prove rights to a domain when another individual uses it for commentary on a business or trademark. Nominative fair use refers to one individual using another’s trademark to comment on the trademark’s products or related business. Is using someone else’s name for a domain to comment on that individual protected under nominative fair use? It depends on the good or bad faith behind the domain use.
What’s the difference between good and bad faith?
To differentiate between good and bad faith, courts look at the possible deception intended by the domain owner. These “gripe sites” can’t keep complete access to that specific domain if the domain matches the trademark (or name) exactly. While the First Amendment is weighed heavily since the freedom of speech is precious to the American people, the right to one’s own name is weighed almost as heavily. This doesn’t apply to a situation where a domain is wrongfully taken from an individual, but to one individual using a domain first and another individual bringing suit on the fair use of the domain name.
Weighing the First Amendment protections
Individuals do have the right to criticize or comment on others, but they don’t necessarily have the right to misdirect the public. If a domain name includes someone’s name and adds commentary, the court is much more likely to allow the fair use. If the domain name is only the individual’s name, the court is likely to see this use as misdirection, since individuals on the Internet often assume that domain names describe exactly who runs them. For example, Wal-mart Stores Inc owns the walmart.com domain. Equally, Kylie Minogue, who has a trademark for “Kylie,” also has the domain rights to the website kylie.com.
If you think someone is using your name improperly or you want to proactively protect your brand, contact Revision Legal’s Internet attorneys through our contact form or by calling 855-473-8474.
Image Credit: Ervins Strauhmanis
Protecting Your Name Online: Trademark, ACPA, and UDRP
Whether you are an individual professional, a public figure, or a business entity, your name or brand may be your most valuable asset in the digital marketplace — and it is vulnerable to domain cybersquatting, social media handle squatting, and bad-faith online exploitation. Understanding the legal tools available to reclaim and protect your name online is the first step toward an effective strategy.
The Anticybersquatting Consumer Protection Act
The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), provides a federal cause of action against anyone who, with a bad faith intent to profit, registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive or famous trademark or personal name. Congress enacted the ACPA in 1999 specifically to address the practice of individuals registering domain names consisting of others’ names and trademarks for the purpose of selling them back at a profit. The statute enumerates nine non-exhaustive factors courts use to assess bad faith intent, including the registrant’s trademark or intellectual property rights in the domain name, whether the domain name consists of the registrant’s own legal name, the registrant’s prior legitimate use of the domain name, and the registrant’s offer to sell the domain name to the mark owner for financial gain without legitimate prior use. A plaintiff who prevails under the ACPA can recover the domain name itself, injunctive relief, and statutory damages between $1,000 and $100,000 per domain name, plus attorney’s fees in exceptional cases.
UDRP: The Faster, Cheaper Alternative to ACPA Litigation
The Uniform Domain-Name Dispute-Resolution Policy (UDRP), administered by ICANN-accredited providers including the World Intellectual Property Organization (WIPO), provides an administrative dispute resolution process that can be resolved within 60 days at a cost of $1,500 to $5,000 — compared to months or years and tens of thousands of dollars for federal court litigation. To succeed in a UDRP proceeding, a complainant must establish three elements: the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; the registrant has no rights or legitimate interests in the domain name; and the domain name was registered and is being used in bad faith. If successful, the remedy is transfer of the domain name. UDRP and ACPA are not mutually exclusive; a complainant who loses a UDRP proceeding can still file in federal court.
Trademark Registration as the Foundation of Name Protection
Both ACPA and UDRP proceedings are significantly strengthened by an active federal trademark registration. A U.S. trademark registration provides constructive nationwide notice of ownership, a presumption of validity, and incontestability rights after five years of use. For individuals — whether public figures, attorneys, authors, speakers, or entrepreneurs — personal name trademarks are registrable when the name has acquired secondary meaning as an identifier of commercial services. Kylie Minogue’s trademark in Kylie for entertainment services, referenced in this post, is a textbook example of a personal name trademark successfully registered and enforced against a domain squatter.
Social Media Handle Squatting
Domain cybersquatting now has a social media corollary: handle squatting, where a third party registers a username on platforms like Instagram, Twitter/X, LinkedIn, or TikTok that corresponds to a brand or individual’s name. Most major platforms have identity violation policies that allow trademark owners to reclaim squatted handles through an administrative process. Stronger trademark rights — particularly federal registration — significantly improve the prospects of success in platform-level reclaim requests.
If someone is using your name or brand as a domain name or social media handle without authorization, or if you want to proactively register and protect your personal name or business brand as a trademark, Revision Legal’s internet and trademark attorneys can help. Contact us through the form on this page or call 855-473-8474.
Proactive Steps to Secure Your Online Name Before Problems Arise
The most effective strategy for protecting your name online is a proactive one. Register your name or brand as a federal trademark before a squatter or competitor does. Register the domain name and common variations — including common misspellings and the most popular TLD extensions — even if you do not immediately intend to use them all. Claim your name on major social media platforms to prevent handle squatting. Conduct periodic searches of domain registration databases and trademark records for confusingly similar registrations. Businesses that invest in this proactive protection spend a fraction of what it costs to reclaim a domain or handle after a bad-faith registrant has established themselves. Revision Legal helps businesses and individuals build comprehensive online brand protection strategies. Contact us through the form on this page or call 855-473-8474.
