Do you run a business that holds a trademark? Have
you gone to yourbusiness.com, only to find someone else has registered
the domain? If the domain is parked or is for sale, this may be what is known as
'cybersquatting'.
Cybersquatting is where someone registers a domain name they know is (or contains) a trademark, with the intent of selling it to the trademark holder at an inflated price. Cybersquatting also includes any other bad faith intent to profit from the use of a domain, containing a trademark. There are practices similar to cybersquatting, such as typosquatting, which is registering variants of popular trademarks or typos of trademarks (hence the name).
Cybersquatting is where someone registers a domain name they know is (or contains) a trademark, with the intent of selling it to the trademark holder at an inflated price. Cybersquatting also includes any other bad faith intent to profit from the use of a domain, containing a trademark. There are practices similar to cybersquatting, such as typosquatting, which is registering variants of popular trademarks or typos of trademarks (hence the name).
So what can you do about it?
If you believe the owner is cybersquatting on your trademark, you do have legal rights to claim the domain from the registered owner. There are several methods of launching a dispute against the owner; the most common is using the Uniform Domain Name Resolution Policy (UDRP) process.
The UDRP process, often referred to as WIPO (a popular arbitration service), was developed by the Internet Corporation for Assigned Names and Numbers (ICANN). People generally opt for the UDRP method, as it is usually quicker and less expensive than taking the dispute to court.
If you are a smaller business and are not sure if you can afford the UDRP service fees, you can first try contacting the domain owner to purchase the domain. The issue with this approach is that the cybersquatter will be profiting from sale, thus getting exactly what they want.
Do I have a case?
When making a UDRP claim, you need to demonstrate the following:
1. the domain name is identical or confusingly similar to a trademark or service mark, to which you have rights; and
2. the domain owner has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
You must be able to prove all three, otherwise you will loose the case. If the domain is being parked and is a trademark you have rights to, then you can prove 1 and 3, but 2 can often be more difficult. For example, if it is the owner's name or business name, the owner has a legitimate reason for owning the domain.
If the domain is not parked, and the owner is trading using the name and selling products, this may also make 3 difficult to prove.
How a the UDRP process works
Firstly, the trademark holder (known as the complainant) submits a claim to the UDRP arbitration service, stating why they believe you hold the trademark and why the current owner (known as the respondent ) is using the domain with bad faith intent. Fees for this service are paid upfront, regardless of the outcome of the claim.
Firstly, the complaintant fills out a UDRP claim against the current owner (registrant). The arbitration service notifies the the complainant and the respondant, that a UDRP claim has been filed. The registrar (domain registration service) must lock the domain, so that it cannot be transferred or modified by the owner, and also verify the owner's details.
If the domain owner fails to respond to the UDRP, generally they will default (lose). If the complainant wins the claim, it is not transferred to them immediately. It will typically be held for a 10 days, allowing the respondent a chance to pursue the dispute in court. A court ruling can override a UDRP.
If you believe the owner is cybersquatting on your trademark, you do have legal rights to claim the domain from the registered owner. There are several methods of launching a dispute against the owner; the most common is using the Uniform Domain Name Resolution Policy (UDRP) process.
The UDRP process, often referred to as WIPO (a popular arbitration service), was developed by the Internet Corporation for Assigned Names and Numbers (ICANN). People generally opt for the UDRP method, as it is usually quicker and less expensive than taking the dispute to court.
If you are a smaller business and are not sure if you can afford the UDRP service fees, you can first try contacting the domain owner to purchase the domain. The issue with this approach is that the cybersquatter will be profiting from sale, thus getting exactly what they want.
Do I have a case?
When making a UDRP claim, you need to demonstrate the following:
1. the domain name is identical or confusingly similar to a trademark or service mark, to which you have rights; and
2. the domain owner has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
You must be able to prove all three, otherwise you will loose the case. If the domain is being parked and is a trademark you have rights to, then you can prove 1 and 3, but 2 can often be more difficult. For example, if it is the owner's name or business name, the owner has a legitimate reason for owning the domain.
If the domain is not parked, and the owner is trading using the name and selling products, this may also make 3 difficult to prove.
How a the UDRP process works
Firstly, the trademark holder (known as the complainant) submits a claim to the UDRP arbitration service, stating why they believe you hold the trademark and why the current owner (known as the respondent ) is using the domain with bad faith intent. Fees for this service are paid upfront, regardless of the outcome of the claim.
Firstly, the complaintant fills out a UDRP claim against the current owner (registrant). The arbitration service notifies the the complainant and the respondant, that a UDRP claim has been filed. The registrar (domain registration service) must lock the domain, so that it cannot be transferred or modified by the owner, and also verify the owner's details.
If the domain owner fails to respond to the UDRP, generally they will default (lose). If the complainant wins the claim, it is not transferred to them immediately. It will typically be held for a 10 days, allowing the respondent a chance to pursue the dispute in court. A court ruling can override a UDRP.
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