LexAnalytica, PC handles domain name disputes, such as cybersquatting and other types of unfair competition related to domain names. The U.S. Anticybersquatting Consumer Protection Act prohibits bad faith registration or use of Internet domains using others’ trademarks. Under this law, cybersquatting can take a number of forms.
For instance, it occurs when a party registers a domain name containing another’s trademark, and offers to sell it to the trademark owner or someone else for a significant profit. It can also include “typo” domains – domains that misspell a trademark owner’s mark – where the cybersquatter directs users who misspell their intended domain to another website containing third-party sponsored ads
The ACPA can be a powerful tool. First, it allows for injunctive relief, and also permits a successful plaintiff to recover statutory damages of up to $100,000 per domain. Also, a successful plaintiff can be entitled to recover its attorneys’ fees.
Liability for cybersquatting under the ACPA requires:
That the registrant has a bad faith intent to profit from cybersquatting.
That the registrant has registered, traffics in, or uses the domain in question.
That the domain name is identical to, or confusingly similar to the mark of atrademark owner, or dilutes that trademark.
In addition to the ACPA, trademark owners can pursue relief through the Uniform Dispute Resolution Policy, which is a dispute resolution mechanism that must be used by each authorized domain name registrar. Under this Policy, a trademark owner can file a complaint with an authorized arbitration organization that a third party has registered and is using the trademark owner’s mark without authorization. The trademark owner under a UDRP proceeding must prove substantially the same things as required under an ACPA case, but the two types of enforcement action have different advantages. A UDRP arbitration is limited because it can only order the cancellation or transfer of a domain. By contrast, the ACPA provides much more robust remedies. However, a UDRP arbitration is generally much cheaper than a ACPA action because the arbitration occurs on a quick timetable, is decided solely on written papers and does not include any discovery.