Choosing a domain name is one of the most important things you will do as a business owner. Your domain name is your brand’s identity on the internet and usually encompasses all that your brand represents. Sometimes great minds think alike and unintentionally register a domain name partly trademarked by another company. This is exactly what cybersquatting means.
For example, imagine you have an amazing idea for your website’s brand. You want to provide troubleshooting advice for Apple. You utilise how to to articles and videos to illustrate your points. After, you decide to register your domain name as appleland.com or appleiphoneadvice.co.uk to let your audience know exactly what your business is about. While this may seem innocent, you are now guilty of Cybersquatting.
Sure you may have done this inadvertently. However innocent, you are now liable. In fact, Apple can sue you for using their trademark illegally without their permission. While some may accidentally commit cybersquatting there are others that intentionally register domain names that contain a component of a company’s branded trademark in order to extort money from them.
What is Cybersquatting?
In a nutshell, cybersquatting is registering a domain name that partly contains a registered trademark brand name or is similar to an existing trademarked name. Today many companies trademark popular words which are actual brands. Here are a few common words/terms that companies registered a trademark: apple, scotch tape, Relator, Photoshop, Rollerblade, etc. Trademarks prohibits you from using certain words anywhere in a domain name. Learn more about what trademarks can do for your domain or brand here.
Penalties and Fines for Cybersquatting
A holder of a trademark can sue a suspecting and unsuspecting cybersquatter upwards to $100,000 or more. In most cases, the holder of the trademark will contact the domain name owner. They will either request turning over the domain name, or file a complaint of cybersquatting to the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
Uniform Domain-Name Dispute-Resolution Policy (UDRP)
UDRP is a simple process of lodging a complaint without the costly use of litigation. When a company holding the trademark files a complaint and wins the argument the cybersquatter doesn’t pay a penalty. instead, the squatter must give up the domain name in question.
For a company to win a cybersquatting claim filed under UDRP they must prove and show the following:
- The domain name registered contains their trademark or is somehow similar. For example, with Apple, they can simply show their trademark documents to prove this. Otherwise, a company that does not have a registered trademark can show proof of use over time.
- The cybersquatter does not have legitimate claim or interests in the registered domain name. The company making the claim has to prove that you don’t have any legitimate interest in the domain name. Perhaps you only registered it because it is similar to what your business offers.
- The registration and use of a domain name in bad faith.
Proving 1 of these is not enough for a company to win a complaint of cybersquatting under UDRP. They must prove all three points listed above in order to win the cybersquatting claim.
Reverse Domain Name Hijacking
Technopedia explains Reverse Domain Name hijacking as attorneys arguing that a party, usually a trademark holder, has made false cybersquatting claims against the legitimate owner of a domain. This includes various kinds of intimidation related to trademark litigation. A person who legitimately owns a domain may be pressured into selling it to another party. This resembles a very similar kind of practice called domain hijacking.
The practice of domain hijacking and reverse domain hijacking litigation has brought a number of types of cases to the forefront of the field of IT law. It has led to examining of trends in domain registration and ownership, domain purchase, and copyright or trademark law as applied to the Internet.
4 Ways to Determine Domain Hijacking
Some reasons a panel may find a company guilty of reverse domain name hijacking are:
1. The company filing the trademark claim against the domain name holder knew they had a legitimate right to the domain name.
An example of this is when the company name matches the surname of the domain name owner. If the company filing the claim was aware that the domain name owner was the same as the domain, then they were fully aware that the domain owner had a legitimate claim to the domain name and was not cybersquatting intentionally. Another example is if the domain name owner can prove that they’ve been using the company name for years.
2. The company filing the claim left out invaluable information from the complaint.
Sometimes companies will only submit information that supports and helps their case. They intentionally leave out information that can damn the case or prove their claim false. For example, the company filing the complaint could submit an email as evidence aiming to prove the domain owner accused of cybersquatting contacted them about selling the domain name, when in fact the full email conversation would show it was the complainant that in fact contacted the domain owner about buying the domain and not the other way around.
3. Reverse Domain Name Hijacking as Plan B.
This refers to when a company tries to buy a domain name from an owner but when it cannot negotiate a suitable price it files a UDRP complaint of cybersquatting.
4. Complainant knew it wouldn’t have won the case.
In this case, the complainant’s trademark was made after the domain owner’s registration of the domain name in question. As UDRP states in order to prove that a domain was registered in bad faith, a Complainant must illustrate that the domain owner was targeting it. That’s impossible if the company or its trademark didn’t exist when the domain was registered.
While there’s no monetary penalty for being found guilty of filing a reverse domain name hijacking case, domain owners can subsequently sue the Complainant in court to seek an award for time lost, stress and for whatever reason.
Protect Yourself against Reverse Domain Name Hijacking
If targeted by a company claiming trademark rights of your domain name contact a lawyer immediately. Ensure this lawyer specializes in cyber/internet law. Companies can target the little guy just to bully them out of their domain names. For example, in 2012 the city of Paris (in France) was found guilty of reverse domain hijacking for the domain parvi.org. They had to pay $125,000 including legal fees to the domain owner.
The key to any situation as a domain owner is to know your rights. If you have doubts, seek legal help immediately. Especially if you are not sure of a claim against you. When registering a domain name, checking trademark lists may be a great way to avoid violating any trademarks with established brands. If you need more information about registering trademarks check here.