Domain Name Hijackings & Cybersquatting

Monte:-“We get a ton of questions when we are in the office. We have a lot of domains registered, people call and say “my name was hijacked.” I own the rights, walk us through the 3 most important things one has to do to prove to get the domain back.”

Jay:-“The definition of this thing called cybersquatting, the 3 things are 1 st is the domain name identical or really similar to the trademark to which the complainant has rights , there is rights in the name, based on consumer recognition of the name, 2 nd for complainant is to demonstrate the domain holder has no legitimate rights or interest in the domain. That is the big gray area. Get into more detail on proving that. If it’s a name you have been using and commonly known by, have a legitimate interest in operating a bonafide business under that name or able to demonstrate having plans to use the domain name. It’s important to get you’re domain up and running or be able to show that you have plans for it. Show your domain name fits into a business plan that you had. Legitimate rights and interest that you need for a trademark that you have some reason for using the domain name that doesn’t infringe on the trademark.”

Monte:-”Touch base closer on how to navigate legally, and what the rules of engagement are when you are dealing with a UDRP case or wipe out.”

Jay:-“They can break a couple of different ways. There was dispute over snowboardsforsale.com, that was the name of the company, from a trademark perspective, that isn’t what you want to name your company because what happened was they had lost control of their domain name, it was picked up by someone who didn’t know the reason. There were paperclip links there for snowboards for sale, you could think of a more straight forward domain use than that. It can get more complicated if the words aren’t so plain as day, the domain name PWC.com (papawhiskeychaslie.com) was registered by someone who had a PPC page that was going to personal watercraft and I’m not much of an aquatic person, but I learned quickly, these are generically known as PWC’s and Price Waterhouse Cooper believed that they had trademark rights to PWC.com. That was a legitimate use of PWC, using it for person watercraft had they built links to other accounting firms that would not have been legitimate. The 3 rd point is the domain name was registered and used in bad faith. there are a couple of examples in the policy in the kind of things that might constitute BAD FAITH. If there is something about what you did that doesn’t seem right, that can be a broad catchall, one of the ones would be selling competitive products directly, I register with a brand name of a product and start selling knock-offs. I’ve gone out and registered every variation of this trademark and I approached the trademark holder, if you want this site it will cost you $100,000, extortion, leads to a cat and mouse game. Failure to maintain proper whois information, pointing the domain at odious, if it is adult material and relatively well know trademark you could have a hard time. There have been as number or cases based on women’s name. But it is just a woman’s name.”

Monte:-“We’re even seeing domain names that have double meanings, that’s where you get to a gray are, it may mean something the company doesn’t want it to mean.”

Jay:-“Exactly, there have been a couple of those; I don’t know what the rules of the radio broadcast are so I won’t go into detail. There are cases where there truly are 200 panelists that are in a pool of people that decide these cases; some do have legitimate differences of opinion and approaches to cases. Most panels will come out with the conclusion that the domain name clearly shows disassociation from the trademark. There have been a number of favorable court cases on using the name of the company for criticism of a product.”

Monte:-“A lot of luck of the draw, a lot of proving one side and those who come together with good a good case of why thy should own the name. It really relies on the panel.”

There is a small body of law developed on its own. It’s rare that you have an actual, a unique fact pattern and knowing how to navigate through old cases to find the most similar one to yours. Finding one and saying “well this one is extremely similar to mine in these ways,” it will take you a long way.”

Jay:-“If someone does feel they own the right to domain name, even if its trademarked, by not defending the case at all, most likely 99% of the time that goes against you, then it is documented as a precedence for future cases.”