Securing the right website name or domain name is critical for all businesses. This is because digital assets are valuable investments. It is best to buy the domain name of your trademark. However, what happens when the domain name of your trademark is already taken? Among the threats to this investment is cybersquatting or cyberpiracy.
Does someone have your trademark domain name? Or, did someone else register your trademark as a domain name?
Cybersquatting involves the registration of a domain name that features someone else’s trademark in hopes of selling it to the trademark owner for a high price or to divert traffic to another site. The term “cybersquatting” is derived from “squatting“, which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own, rent, or otherwise have permission to use.
Just as physical address is important for brick and mortar businesses, domain names are valuable internet addresses. The reason is the same, we are in the digital age and to stay competitive, you need to make it easy for your clients to find you online. Location, location, location!
Therefore, these are a high priority:
- Own a strong and protectable trademark
- Apply to register your trademark
- Buy the domain name that features your trademark
What can you do to get your Domain Name?
Start by investigating what the domain name is being used for and if there is a reasonable explanation for the use of the domain name. Also, find out who the owner is and if the registrant is willing to sell it to you at a price you’re willing to pay.
If your trademark is distinctive and if you began using your trademark before someone else bought the domain name, you may have a case of cybersquatting. Also, the absence of a real website or if it’s being used to earn money from ads may indicate the domain name owner’s bad faith intent.
However, if you’re not successful in communicating with the domain owner, there are other legal recourses. One legal recourse against this form of cyberpiracy, can include an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP). This requires a complainant to establish three elements. Namely, that:
- The domain name is confusingly similar to the complainant’s trademark;
- The registrant has no rights or legitimate interests in the domain name; and that
- The domain name has been registered and is being used in “bad faith”
As a UDRP complainant, you can elect to have the domain name transferred to your control, or to have it cancelled.
You could also file a claim in federal court under the Anticybersquatting Consumer Protection Act (ACPA). In addition, if the domain name registrant is using your trademark in commerce, you can assert trademark infringement under the Lanham Act and/or dilution under the Lanham Act.
The decision should be made after a careful analysis of the specific facts. Trademark lawyers at Solid Rep LLC will assist you.
Invest in Your Trademark, It’s Your #1 Asset™Alice M. Cabrera, Esq.