How to Protect Your Domain Name from Competitors and Cybersquatters

With so much business now conducted online, is imperative to protect your company’s valuable domain name rights from both competitors and cybersquatters...

With so much business now conducted online, is imperative to protect your company’s valuable domain name rights from both competitors and cybersquatters. If you discover that another domain name is using your company’s trademark without authorization, there are a number of legal remedies, which we will discuss below.

What Is a Domain Name? 

Simply stated, a domain name is:

• Your website name.
• The Internet address where Internet users can access your website.
• Used for finding and identifying a computer on the Internet.
• Used as an enhancement to your brand.
• Unique – no two domain names are exactly the same.

Computers use Internet Protocol (“IP”) addresses, which are a series of numbers. However, it is difficult for humans to remember strings of numbers. Because of this, domain names were developed and used to identify entities on the Internet rather than using IP addresses.

A domain name is made up of a combination of parts, such as words, letters, numbers and symbols. In a typical scenario, a domain name has a secondary level domain (“SLD”) and a top-level domain (“TLD”). In the case of <scarincihollenbeck.com>, “scarincihollenbeck” is the SLD and “.com” is the TLD.  Overall, .com is the most common TLD, with about 140 million in use, followed by .org and .net.  No two websites can have the exact same domain name.

In order to use it, a domain name must be registered with a registrar, a company that registers and holds your domain name, before you can use it. Every domain name is unique.  According to the latest data, there are over 360 million registered domain names.

According to Internet Rules, each registrar is required to keep “Whois” records for each domain name that it has registered.  A Whois record contains all of the contact information associated with the person, group, or company that registers a particular domain name. Typically, each Whois record will contain information such as the name and contact information of the Registrant (who owns the domain), the name and contact information of the registrar and other administrative and technical details.  Often, the registrant will delete some of this information by using a privacy service, which indicates bad faith by the cybersquatter. 

Who Is ICANN?

The Internet Corporation for Assigned Names and Numbers (“ICANN”) is a nonprofit organization that is responsible for coordinating the maintenance and procedures of several databases related to the domains used on the Internet, ensuring the Internet’s stable and secure operation. ICANN is made up of policies and rules that domain name owners and registrars must follow.

ICANN’s primary principles of operation have been described as helping preserve the operational stability of the Internet and to promote fair competition.  Much of ICANN’s work has been directed to the Internet’s global Domain Name System (“DNS”), including policy development for internationalization of the DNS and introduction of new generic top-level domains (TLDs).  The top trending TLDs issued by ICANN include Christmas, Jumbo, Diabetes, Halloween, Braces, Dorian, Orthodontics, Hurricane, Volume, Vaping, but there are hundreds more.

What Is the UDRP and How Does It Work?

Everyone who registers a domain name with a registrar must sign a contract that binds him/her to ICANN’s Policies and Rules, which includes agreeing to be bound by ICANN’s Uniform Dispute Resolution Policy (“UDRP”). The UDRP is a process established by ICANN for the resolution of disputes regarding the registration of internet domain names.  When a registrant chooses a domain name, the registrant must represent and warrant, among other things, that registering the name will not infringe upon or otherwise violate the rights of any third party, and agree to participate in a UDPR arbitration proceeding should any party assert a claim that another party has violated ICANN policies and rules by violating its trademark rights. The main providers of the UDRP process are The National Arbitration Forum and the World Intellectual Property Organization (WIPO).

Access to the UDRP process can be complex.  Every well-known company has trademarks that cybersquatters want to use in an anti-competitive way.  Typically, a cybersquatter will target a company’s trademark by registering a domain name that is close to the trademark and using it to the detriment of the company.  A trademark owner, if it wishes to stop the use of a domain name, can file a complaint and evidence with an ICANN-approved UDRP arbitration panel, such as the NAF or WIPO and request that the domain name be transferred to it.  In the complaint, the trademark owner must prove with evidence:

• It owns the trademark;
• The domain name is confusingly similar to the trademark;
• The cybersquatter has no legitimate rights to the trademark;
• The cybersquatter has acted in bad faith in registering and using the domain name.

No Legitimate Rights

A cybersquatter will be found to lack legitimate rights and interests in such cases where a cybersquatter:

• Uses a domain name in its entirety;
• Registered the domain name long after the trademark owner registered its trademark;
• Concealed its identity and location and to present false information on those issues;
• Has offered the domain name for sale;
• Used the domain to redirect users to other websites that sell competitive products;
• Engaged in these activities without the consent or approval of the trademark owner;
• Is not commonly known by the domain name;
• Uses a privacy service to hide its identity; and
• Parked the domain name.

Acting in Bad Faith

A cybersquatter will be found to have acted in bad faith when:

• The cybersquatter knew of the trademark prior to registering the domain name;
• The cybersquatter offers the domain name for sale for more than its estimated out-of-pocket costs;
• The disputed domain name resolves to a parked webpage;
• The cybersquatter has a historical pattern of bad faith registration and use, i.e., it is a “serial cybersquatter;”
• The cybersquatter attempts to disrupt the trademark owner’s business;
• The cybersquatter uses the domain name to divert Internet traffic to ME’s competitors;
• The cybersquatter uses the domain name to divert Internet traffic to illegal or pornographic sites;
• The cybersquatter conceals its identity and location;
• The cybersquatter committed other bad acts

The cybersquatter has thirty (30) days to respond to the complaint.  If it does not respond, the arbitration panel will decide the case on the basis of the complaint.  In most cases, where the cybersquatter does not appear in the case, the arbitration panel orders that the domain be transferred to the trademark owner.

Key Takeaway

In our increasingly digital world, domain name protection should be part of your intellectual property strategy. At Scarinci Hollenbeck, our attorneys are highly experienced in assisting clients in developing viable domain name strategies tailored to their individual needs. 

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Joseph Manak, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.