Under federal law, it has been permissible for a trademark owner to sue the owner of a domain name for bad-faith registration since Nov. 29, 1999, when President Clinton signed the Anit-Cybersquatting Protection Act.
The CPA provides that anyone bringing a claim must prove bad faith. Bad faith is a legal term that means dishonesty of belief or purpose. Did the registrant of the domain name register the domain name with the intention of doing nothing more than selling it? This is an important and sometimes difficult question to answer. For instance, what if the domain name is secured but development of the website takes a lengthy period of time? Perhaps there is a good-faith intention to use the domain name at some point in the future.
How Do You Check on a Domain Name?
You may be able to tell if another domain name registrant is cybersquatting by some due diligence. Due diligence is a legal term that means putting forth careful time and consideration investigating a transaction. If in your registration process you discover that a domain name is unavailable, simply attempt to go to the website using the unavailable domain name and check it out. What you find may offer some helpful information. Is the site fully operational and related to the domain name? If so, there may be no cybersquatting as defined by law. That does not mean, though, that there is no trademark infringement or confusion in the marketplace of two similar or identical trademarks.
How Do You Resolve Disputes Concerning Domain Names?
Because domain names are registered privately on a first-come, first-serve basis and trademarks are registered through local and national government entities, conflicts do arise. Such disputes can cross many borders. With recognition of the inherent difficulties in litigating all such disputes, the World Intellectual Property Organization (WIPO) implemented a substantial and uniform structure of addressing such disputes using arbitration and mediation. The WIPO ecommerce site (www.wipo.org) includes considerable information and a fee schedule.
If the dispute does not rise to the level of WIPO intervention, simple negotiation can often resolve a dispute. When neither party is acting in bad faith, reasonable solutions can be found if the parties are willing to calmly discuss the issues. A token payment to purchase a name is sometimes more than satisfactory. Many registrants hold domain names with no hope of ever really developing the name commercially. In addition, business plans change for all kinds of reasons and a domain name may not be needed after all.
Domain name disputes involving alleged bad-faith registration are typically resolved using the Uniform Domain Name Resolution Policy (UDRP) process developed by the Internet Corporation for Assigned Names and Numbers (ICANN).
Some countries have specific laws against cybersquatting beyond the normal rules of trademark law. The United States, for example, has the U.S. Anticybersquatting Consumer Protection Act (ACPA) of 1999.
If you have been sued or threatened with a lawsuit, it is probably wise to consult an attorney. It would also be wise to consult an attorney if you have questions or problems in this area that need resolution. Without the threat of litigation, however, it’s probably best not to look too hard for a dispute. Litigation can be costly and time consuming; common sense and courtesy are frequently the more cost effective and perhaps more productive tools to use.
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