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You are here: Home  Domain Names Trademark Owner

For Trademark Owners: How to Recover a Domain Name from an Infringing Cybersquatter

by Charles Runyan, Ph.D., J.D. Domain Name Law Attorney

Background

The United States Patent & Trademark Office has more than 3,000,000 registered trademark and service marks, all of which may be searched on its web site.  More than 33,000,000 internet domain names have been registered.  If you own a federally registered trade mark or a service mark, there is an excellent chance that one or more cybersquatters have obtained domain names that are identical or confusingly similar to your mark.  Domain names routinely infringe on trademarks and service marks.

One reason there are so many trademark infringing domain names is because of the sheer volume of registered domain names.  There are a lot more domain names than words in the English language.  The single biggest reason there are so many infringing domain names, however, is that for the most part, the public in general, and the domain name registrants in particular, are unaware of: (i) federal trademark laws, (ii) the legal significance and consequences of trademark infringement, and (iii) how to determine if a desired domain name might infringe on a trademark.

The domain name industry wants to keep the public ignorant about trademark law and its relationship to domain names.  Issuing and selling domain names has become a multi-million dollar business.  The companies that issue domain names and the companies that facilitate domain name appraisals, auctions and sales all have a vested interest in the domain name market so they are not likely to kill the goose that laid the golden egg by telling prospective domain name registrants and buyers that a particular domain name may be a ticket to a lawsuit or an ICANN arbitration procedure.

Mark Owners Must be Diligent in Finding Infringement & Taking Action to Protect Their Marks

The Lanham Act, the federal trademark statute, and the case law interpreting it, place a duty on mark owners to take appropriate action to protect their marks when they discover infringement.  It is possible for a mark owner to lose rights in a mark permanently if the mark owner does not take necessary protective action to prevent infringement and improper use of the mar,.  Mark owners with valuable trademarks and service marks should remember the phrase "Protect it or Lose it."

How to Find Infringing Domain Names

Despite the existence of 33,000,000+ domain names, it is actually very easy for a trademark or service mark owner to find domain names that infringe on a mark.  In a matter of a few minutes, a mark owner with a connection to the internet can obtain a list of all domain names that contain text identical to a mark.  It is simply a matter of going to a web site that provides a comprehensive data base of registered domain names and performing an appropriate search.  For a detailed explanation of finding infringing marks, see  For Trademark Owners:  How to Find Cybersquatters Infringing on Your Mark.  I frequently start with BetterWhois when looking for infringing domain names.

A Trademark Owner"s Options After Finding an Infringing Domain Name

A trademark or service mark owner who finds a domain name that is identical or confusingly similar to its mark has several options with respect to how to deal with the possible infringement.  The owner of an unregistered or common law mark may be able to take action against a cybersquatter and obtain an infringing domain name.

The following is a non-exhaustive list of options (in order from least to most costly) available to a mark owner in combating infringing domain names:

  1. Do nothing.  This is the easiest and cheapest course of action, but it runs the risk that the infringing domain names could damage the goodwill of the mark and/or result in the loss of the rights to the mark.

  2. Send a Cease and Desist Letter on Your Letterhead.  The first step in taking legal action against an infringer is to send the infringer a letter known as a "cease and desist" letter.  This is a letter that states: (i) I have a trademark (unregistered common law marks may be protectable), (ii) you are infringing on my trademark and causing me damage, (iii) you must immediately cease using the mark and not use it in the future, (iv) you must transfer the domain name to me, and (v) if you fail to take the action demanded, I'm going to turn the matter over to my attorney to take appropriate legal action, which includes a claim for damages.  This is worth a try.  It may work sometimes, but in my experience, the letter from the mark owner is usually ignored.  If it works, great, but if it does not, you have lost some time and still have the option to escalate the matter if you desire.  NOTE:  Feel free to down load and use our sample cease and desist letter on your letterhead.

  3. Enter into a Trademark License Agreement with the Infringer.  If the infringer is willing to enter into a license agreement governing the use of the mark (which may be unlikely), the mark owner can counter a claim that it failed to adequately police infringing uses of the mark with the argument that the other party was not infringing because it used the mark under the license agreement.  The down sides to this alternative are that it may cost money to negotiate, prepare and sign the license agreement, the terms of the license may be less than satisfactory, and the licensee continues to use the mark.

  4. Hire a Lawyer to Send a Cease & Desist Letter.  This approach costs money (maybe less than a lawyer prepared trademark license agreement), but it does greatly increase the chance that you will get the desired result.  It is common for the infringer without substantial resources to comply with the mark owner's demands rather than risk being the defendant in a lawsuit or an ICANN Uniform Domain Name Dispute Resolution Policy action.  On the other hand, if the infringer is making money from the infringing domain name, it is likely that a lawyer's cease and desist letter will be ignored. 

NOTE:  KEYTLaw will prepare and send  a cease and desist letter for a fixed fee of $495 per domain name registrant.  If you would like KEYTLaw to send a cease and desist for you, go to KEYTLaw Domain Name Fixed Fee Cease & Desist Letter, download the Cease & Desist Questionnaire, complete the form and mail it or send it by overnight carrier to KEYTLaw with your check for $495/registrant plus $20 for mailing costs.

  1. File an ICANN Arbitration Action to Obtain the Infringing Domain Names.  All registrants/owners of domain names are subject to an arbitration procedure known as ICANN's Uniform Domain Name Dispute Resolution Policy (the "UDRP").  This policy is a fantastic weapon for trademark owners that can be used to actually obtain "ownership" of infringing domain names relatively quickly and cheaply. 

A UDRP arbitration consists of the following steps:  (i) mark owner files a complaint (maximum length 10 pages) and pays an arbitration fee (approximately $1,200 for the first domain name at issue), (ii) domain name owner has 20 days to file an answer, (iii) mark owner has an option to file a reply to the answer within five days of the date the answer is received, (iv) the arbitrator must rule within 14 days, and (v) if the mark owner wins, the domain names will be transferred to the mark owner within 10 days of the decision unless the domain name owner files a lawsuit within the 10 day period in the appropriate court seeking to prevent the transfer.

A UDRP arbitration can be filed, won and the infringing domain name(s) transferred within 50 - 60 days, start to finish.  Because the only documents a mark owner files in a UDRP action are a complaint and an optional reply and there is no discovery, briefs, trial or appearance before the arbitrator, the mark owner's legal fees should be substantially less than an infringement lawsuit.  For a detailed explanation of the UDRP, see KEYTLaw FAQ: ICANN's Uniform Dispute Resolution Policy.

KEYTLaw represents mark owners in UDRP actions on a fixed fee basis with fees set by the number of infringing domain names per registrant.  KEYTLaw may represent clients from all jurisdictions and even from outside the United States with respect to UDRP arbitrations.  For more information about fixed fee legal representation in UDRP actions, see KEYTLaw's UDRP Legal Representation page.

  1. File a Lawsuit in Federal Court Alleging Violations of the Anticybersquatting Consumer Protection Act (the ACPA) or Other Laws.  The ACPA is a relatively recent addition to the Lanham Act.  It gives trademark owners another powerful weapon to use to obtain infringing domain names.  The downside to filing a lawsuit are that the mark owner will incur substantially more legal fees and time litigating the matter than would be required in a UDRP arbitration.  Because the only remedies in a UDRP action are an award from the arbitrator instructing the registrar of the domain name to cancel, transfer or otherwise make changes to domain name registration, a mark owner who seeks other remedies such as money damages or an injunction against ongoing infringement must file a lawsuit under the ACPA, the Lanham Act and/or other applicable laws.  For a detailed explanation of the ACPA, see KEYTLaw FAQ: The Anticybersquatting Consumer Protection Act of 1999.

An ACPA lawsuit can be very effective.  The mark owner is entitled to actual damages or alternatively, the court can award statutory damages of up to $100,000 for each infringing domain name.  In one ACPA lawsuit, the notorious typosquatter John Zuccarini was ordered to pay statutory damages of $500,000 for five infringing domain names plus the mark owner's attorneys' fees and costs of more than $60,000.  See Notorious Cybersquatter Liable for $500,000 under the Anticybersquatting Consumer Protection Act

In conclusion, trademark and service mark owners should use the resources of the internet to monitor their marks periodically for possible infringing domain names.  If an infringing domain name is found, the mark owner should take appropriate action to protect the mark and prevent future infringement.  ICANN's Uniform Domain Name Dispute Resolution Policy and the Anticybersquatting Consumer Protection Act give mark owners powerful tools to stop infringing domain names and obtain "ownership" of the domain names.  Mark owners who fail to properly police infringement of their marks, risk a finding that they have lost their rights in the mark.

Related Articles

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Sample Domain Name Cease & Desist Letter

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KEYTLaw Domain Name Fixed Fee Cease & Desist Letter

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How to Find Cybersquatters Infringing on Your Mark

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ICANN's Uniform Dispute Resolution Policy

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KEYTLaw Wins Cybersquatting Case for Pacific Aircraft

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The Anticybersquatting Consumer Protection Act of 1999

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Notorious Cybersquatter Liable for $500,000 under the Anticybersquatting Consumer Protection Act

This article was first published on August 25, 2001.

About Charles Runyan

Chuck Runyan, Ph.D., J.D., has been practicing intellectual property law since 1997.  Chuck advises trademark holders about domain names that infringe on a trademark and if the trademark holder has a claim to a domain name under ICANN's Uniform Dispute Resolution Policy and the Anticybersquatting Consumer Protection Act.  He has a Ph.D. in chemistry and has been a patent attorney since 1998 whose practice includes patent preparation, prosecution, portfolio management, and opinion work.  Chuck represents individuals and businesses, start-ups through large, multi-national pharmaceutical companies, in their pursuit and enforcement of patent rights throughout the United States and worldwide.  Charles Runyan is licensed to practice law in Arizona, California and Texas.  Call Chuck at 480-205-9365, email at cer@keytlaw.com and fax at 602-297-6890.  Communicating with Charles Runyan via email, telephone or otherwise does not cause you to become a client of Chuck Runyan or KEYTLaw, LLC, or cause your communications to be confidential or subject to the attorney client privilege.  Charles Runyan is of counsel to KEYTLaw, LLC.

Domain Name Law Consultations

Domain name lawyer & trademark lawyer Charles Runyan, Ph.D., offers phone consultations on domain name law and cybersquatting issues for $499 (1 hour) and $299 (1/2 hour).  Call Chuck at 480-205-9365 or send an email to cer@keytlaw.com.

 

 

This page was last modified on October 21, 2008.

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