Cybersquatting is the bad faith registration, trafficking in, or use of a domain name that is identical to, or confusingly similar to a distinctive mark, or dilutive of a famous mark, without regard to the goods or services of the parties. Similar to trademarks and trade dress, cybersquatting is governed by Lanham Act by way of the Anticybersquatting Consumer Protection Act (“ACPA”).
A victim of cybersquatting in the United States has two options: (1) sue under the ACPA of the in federal court; or (2) use an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN). The ICANN arbitration system is usually faster and less expensive than suing under the ACPA.
Under the ACPA, the trademark owner must show: (1) that it owns a distinctive or famous mark (2) that the defendant registers, uses, or traffics in a domain name that is identical to or confusingly similar to the distinctive or famous mark; and (3) that the defendant had a “bad faith intent to profit” from the mark. The “bad faith intent to profit” can be a challenge if the defendant is using the URL as a “parked page.” A court can then award as much as $100,000 in statutory damages for each domain name, cancel or transfer the domain name to the rightful trademark owner, and even award the plaintiff attorney fees.
ICANN proceedings are governed by the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”), which
all registrars must follow. In an ICANN proceeding, a trademark owner must show: (1) the infringing domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the owner of the infringing domain name has no rights or legitimate interests in respect of the domain name; and (3) the infringing domain name has been registered and is being used in bad faith.
As can be seen by comparing the elements under the ACPA versus an ICANN proceeding, there are differences, which could have an impact on the outcome of your case. It is important to hire an intellectual property attorney experienced in cybersquatting such as Erica W. Stump to analyze your case. The team at the law firm of Erica W. Stump, P.A. has experience litigating cybersquatting cases.