You’ve chosen corporate name. You may even have a federal trademark.
But when you apply for a domain name, your company’s address on the Internet, you find out that someone already has it. What do you do?
A person who secures a domain name corresponding to a trademark owned by an another may now be guilty of cybersquatting.
On Nov. 29, 1999, the Anticybersquatting Consumer Protection Act was signed into law.
Under this law, a cybersquatter is someone who, with a bad faith intent to profit, uses a domain name that is confusingly similar to another’s trademark.
In determining whether the cybersquatter acted in bad faith, the law suggests nine factors be evaluated:
1. Does the alleged cybersquatter have any trademark rights of his own in the domain name?
2. Does the domain name consist of the legal name of the alleged cybersquatter?
3. Has the person previously used the domain name with the bona fide offering of any goods or services?
4. Is the alleged cybersquatter lawfully parodying the trademark owner or the trademark?
5. Is it the person’s intent to divert consumers away from the trademark owner’s online location to a site accessible under the domain name in a way that is likely to confuse visitors as to the source, sponsorship, affiliation, or endorsement of the site?
6. Has the person offered to sell the domain name to the trademark owner without having an intent to use the domain name in the bona fide offering of any goods or services?
7. Has the alleged cybersquatter provided false contact information when applying for the registration of the domain name?
8. Has the person registered multiple domain names, knowing they are confusingly similar to trademarks of others?
9. Is a trademark used in the domain name registration really functioning as a trademark?
Under the new law, cybersquatters can be made to transfer the infringing domain name to the trademark owner. Cybersquatters are also liable for recovery of profits lost by the trademark owner, damages suffered by the owner and the costs of the lawsuit.
The trademark owner can choose statutory damages in lieu of actual damages. This is often helpful when the alleged cybersquatter hasn’t earned significant profits through the misappropriation of the trademark. The amount of the statutory damage is not less than $1,000 and not more than $100,000 per domain name.
The new law also provides several important protections to domain name registrants. A reasonable belief by the alleged cybersquatter that the use of the domain name was lawful is a complete defense to a charge of cybersquatting.
Similarly, a court may impose attorneys’ fees against the trademark owner if it believes the trademark owner has acted improperly in attempting to obtain the domain name from the alleged cybersquatter.
Roger Emerson is a shareholder in the intellectual property law firm of Emerson & Associates. He can be reached at (330) 535-9999 or by e-mail at [email protected]. He limits his practice to patents, trademarks, copyrights and Internet law.
