Most people are familiar with the term “squatting,” which is the act of occupying an abandoned or unoccupied space to which the squatter has no claim. But have you heard of “cybersquatting?” Similar to the former term, cybersquatting is defined as the practice of registering names, especially well-known company or brand names, as internet domains, in the hope of reselling them at a profit.
This term came into play in the mid to late 90’s, shortly after public internet use became widespread. In 1999, the Anticybersquatting Consumer Protection Act (ACPA) was enacted to help prevent trademark infringement and consumer confusion about brands, products, places, and people.
A trademark owner, under the ACPA, may bring a cause of action against a domain name holder who (15 U.S.C. § 1125):
Has a bad faith intent to profit from the mark; and,
Registers, traffics in, or uses a domain name that is:
Identical or confusingly similar to a distinctive mark;
Identical or confusingly similar to or dilutive of a famous mark; or,
Is a trademark protected by 18 U.S.C. § 706 (marks involving the Red Cross) or 36 U.S.C. § 220506 (marks related to the “Olympics”)
On the first point there are nine factors the court can consider in determining whether or not the intent of the domain registrant is in bad faith:
Does the registrant’s domain name contain trademark or other intellectual property rights?
Does the registrant’s domain name contain the registrant’s legal or common name?
Is prior use of the registrant’s domain name connected with bona fide offering of goods or services?
Is the registrant’s bona fide noncommercial or fair use of the mark in a site accessible by the domain name?
Was the registrant’s intent to divert customers from the mark owner’s online location? Are they harming the goodwill represented by the mark for commercial gain? Or is the intent to tarnish or disparage the mark?
Is the registrant providing misleading/false contact information when applying for the registration of the domain name?
Is the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner for financial gain, without having used the mark in a legitimate site?
Did the registrant register for multiple domain names that are identical or confusingly similar to marks of others?
What is the extent to which the mark in the domain is distinctive or famous?
These factors have helped courts determine the outcome of many cases since 1999, such as Madonna v. Dan Parisi in 2000 for Madonna.com, and Microsoft v. MikeRoweSoft in 2003 for MikeRoweSoft.com (a web design business run by student Mike Rowe).
Though many cases have come forward over domain names, more recently these complaints have shifted to registered social media accounts. Because of the ACPA, social media platforms have begun to include policies against cybersquatting. Twitter’s policy states, “Attempts to sell or extort other forms of payment in exchange for usernames will result in account suspension.” Facebook also reserves the right to reclaim usernames on the website if they violate copyright and infringe on trademarks.
While trademarks are nothing new, developing technology means that the laws surrounding them will also continue to develop. Trademarks are a vital part of protecting your brand, and in the U.S. court system, claims of infringement are taken seriously. Whether you have trademark questions, think your trademark has been infringed upon, or you would like to file for your own trademark, it’s important to seek out legal advice from an attorney. At Levine Eisberner LLC, our attorneys would be happy to work with you on your trademark needs.