The laws applying to trademark infringement of business names offline have extended to the web. People complain daily about the illegal activities of cybersquatters, and being robbed of their hard-earned business.
“If you fail to protect your domain name, chances are you will be denied the patronage you have worked so hard to build over the years. However, the good news is you can no longer fold your arms helplessly while this happens. This article tackles five ways to take back control of your domain name.” Web Experts from www.umbrellar.com
What is cybersquatting?
Cybersquatting is the registering, reselling or application of a domain name with the malicious intent of gaining from the goodwill of someone else’s trademark. Generally, it is the practice of purchasing domain names of existing businesses with the aim of selling them back to those businesses for a profit. In many countries, cybersquatting is illegal and are often handled in an arbitration proceeding under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP).
If you are a victim of cybersquatting, here are a few things you could do
- Send a letter of cease and desist on your official letterhead
This is one way to start legal action against the party. The cease and desist letter must:
- State clearly you have a trademark to the domain name
- Tell them they are infringing on your trademark and damaging your business
- Warn them to stop using your mark now or in the future
- Instruct them to transfer the domain name to you
- Finally, conclude the letter by letting them know they’ll be hearing from your attorneys if they fail to carry out your request. And the legal action will include a claim for losses incurred.
- Discuss the possibility of a trademark licence agreement with the cybersquatter
Depending on the circumstances, if the infringer genuinely did not intend to take your mark, they may be using the trademark under a licence agreement. While a deal isn’t always straightforward, it is a likely option for this circumstance.
However, the downside of this decision is that it may be expensive to negotiate, prepare and sign the license agreement. The terms may not be as you would like, and the licensee will continue to use the trademark.
- Have your lawyer serve them a cease and desist letter
No doubt, this will cost you, but it is important to understand how much you are losing to the cybersquatter and what it’s worth to get it back. It does increase your chances of receiving the right response. In many cases, infringers without the complete resources to prove the right to use a mark often cave into legal pressure.
In this case, they may give up rather than being the defendant in a lawsuit or an ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) action. Then you can claim all rights to your domain name; ensure most keyword queries reveal your website, even a really long tail with keyword should show your site on the search engine result page.
- File a lawsuit in a court citing violations of the Anti Cyber Squatting Consumer Protection Act
The ACPA is a ten-year-old reformation of the Lanham Act. Trademark owners have the power to regain control of their infringed domain names with this act. However, like all legal actions, the drawback is that it will take more time litigating the case than it will take in a UDRP arbitration and much higher legal costs.
The only solution in a UDRP action suit is an award from the arbitrator requiring the domain registrar name to cancel, transfer or otherwise change the domain name registration. The owner of a trademark who seeks additional compensations such as money, or a restriction against continued infringement must file a lawsuit via the Lanham Act or other applicable laws.