CYBERPIRACY - Why registering or owning internet domains names can be illegal
In 1997, the United States Congress enacted the Anticybersquatting Consumer Protection Act ("ACPA"). This Act is a part of the Lanham Act, which protects against trademark infringement and unfair competition. If you have been directed to this page, it may be because you have registered, held, used, offered for sale, sold or requested payment in connection with an internet domain.
What is a Trademark? A trademark is any word, term, name, symbol, slogan, package design product configuration, or device, or any combination thereof, used to identify goods and/or services and distinguish them from others in the market place or in trade. Even a sound, color combination, fragrance or hologram can be a trademark under some circumstances. The term trademark is often used interchangeably to identify a trademark or service mark.
Why is owning this domain wrong? A domain name which incorporates the trademark of another may be an infringing or illegal domain name. Trademarks are valuable rights to their owners and federal law fully protects against the infringing use of those marks by others. Use of mark as a part or whole of a domain name can constitute trademark use. Federal law provides for immediate injunction against infringing use (without the necessity of a trial) and also provides for statutory damages of up to $100,000 per domain.
What can happen to me? Plain and simple, your involvement in illegal internet domains can cost you dearly, ruin your business, and destroy your reputation. Some recent Court decisions have also held the following:
How does a court determine bad faith? A court is likely to decide that a domain name registrant acquired or used the name in bad faith if the motive to register the domain was commercial gain, if s/he sought to divert customers from a trademark owner to another that, either for purposes of commercial gain or to tarnish the mark, could harm the goodwill belonging to the trademark owner. If someone is deriving commercial gain because of, in part, the presence of another's trademark in a domain name, a court may find that to be evidence of bad faith. A court will almost certainly find bad faith if the domain name holder attempts to sell, rent, license, or charge other fees, to either the trademark owner or someone else, without having used it or without intending to use it, or having used it improperly. A court is also likely to find bad faith if the name holder provides false or misleading identification information when applying for registration, or if the holder fails to accurately update this information. A court will also frown upon a prior history of registering domains containing the trademarks of others. Finally, a court is likely to find bad faith if the person registers a number of names which are identical or similar to trademarks.
I registered the domain first. Why can't I keep it? Being the first to register a domain name does not grant special protection if the domain violates the law. The internet is no different from any other environment when it comes to using trademarks which belong to someone else. The question is not who registered the domain first, but rather, does the trademark in the domain name belong to someone else? Consider whether using that trademark in a "non electronic" forum would violate the trademark owners rights. Because the use occurs "on the internet" does not make it lawful.
The domain I own is different! Why am I being accused? Trademark law requires only that there is "confusing similarity" between the trademark and the accused domain name in order to find infringement. Corrupted spellings, phonetic similarities, "typo" spellings, meaning equivalents, can all count as confusingly similar according to the law. For example, the following domain names have been found to be confusingly similar with the complainant's trademarks:
What now? Although a domain dispute can lead to great expense, and the incurring of substantial attorney fees, it may be that the person sending notice of the problem may be agreeable to resolving the matter in a simple way and at relatively little cost. In this regard, the transferring of the disputed domain to the party who hold the trademark rights, may resolve the matter completely.
Initiating a domain transfer - how it works. The domain's registry (netsol.com, register.com, dotster.com, godaddy.com, etc.) all have simple procedures for transferring a domain, The procedures can be accessed by visiting the registrar's web site, then selecting "transfer your domains".