When you’ve spent time and money developing a brand, the last thing you need is to find that someone else has registered your domains and is demanding outrageous sums to sell them to you. The Industry’s resident legal expert Tahir Basheer talks you through how to avoid falling foul of the cybersquatters.
What is cybersquatting?
Cybersquatting sounds like some kind of virtual reality legs, bums and tums class. But it actually refers to the practice of registering / purchasing domain names which are related to well-known brands and trade marks. The squatter then attempts to sell the domain name at a hugely inflated price to those brand / trade mark owners. You won’t need your Sweaty Betty yoga pants – instead you’ll need a lawyer.
How are companies targeted?
Many squatters look for newly registered companies to help them choose which domain names to register. However, at the moment many established brands are being targeted because of the release of new top level domain names like .london.
Squatters often wait for you to get in contact with them. However, a new trend has emerged in China whereby the squatters send scam emails from “authorised domain name agencies” attempting to extort brand owners after they show interest in the domain name.
What can you do
1) Write to the squatter in order to solve the dispute. The disadvantages of this are that the squatter may not respond or they may use your eagerness to obtain the domain name as a reason to hike up their asking price
2) Write to the registrar of the domain name. Domain names aren’t actually bought and sold – in fact they are only registered for a set period of time, usually one or two years. The website will have a Registrar which will be in charge of registering and administering the domain name. Some will have specific contractual terms which deal with cybersquatters
3) Initiate a domain name recovery dispute. Domain names will be manages by different organisations depending on the top – level domain (for example .com and .co.uk) .Com domain names are managed by ICANN which has a Uniform Dispute Resolution Policy (“UDRP”) for domain name disputes. Under this policy a complainant can recover a domain name.
Entering a domain name dispute
In order to be successful in a dispute the three criteria to fulfil are:
1) The domain name is identical or confusingly similar to a trademark in which you have rights.
Of course if you have a registered trade mark this it is relatively straightforward to prove, provided the domain name is similar to the trade mark. However, the UDRP can also be used if there is no registered trade mark, provided that the mark / brand name has built up substantial goodwill. If the mark is a famous individual’s name, the fact that it is famous does not automatically prove goodwill. The name should have been used in trade or commerce and must have acquired a secondary meaning so that it is associated with particular goods or services. Generally, to evidence goodwill you would be looking for things like sales numbers and PR coverage
2) The registrant (i.e. squatter) does not have any rights or legitimate interests in the domain name.
If the squatter has not used (or made preparations to use) the website to offer goods or services , has no trade mark / rights in the name and is not using the site for a legitimate reason then they will have no rights or legitimate interests in the domain name. For example, if the website attempts to misleadingly divert consumers there will be no legitimate interest.
3) The registrant registered the domain name and is using it in “bad faith”.
By bad faith we mean that the person has only registered the domain name to:
– Sell it to the person who owns the trade mark / right
– Prevent the person who own the trade mark / right from owning it;
– Disrupt a competitors business;
– Attract people to the website because of confusion with the trade mark / right.
If you are successful, the domain name can be transferred to your ownership or can be cancelled. However, you should be aware that the process is both time consuming and costly. The best way to stop cybersquatting is to think strategically before your brand launches in order to obtain the most relevant domain names and to consider making defensive registrations for brand names you have in the pipeline.
I mentioned the new top-level domains, and fortunately ICANN has introduced some protection mechanisms for brand owners. Trademark owners will be able to record details of their registered trademarks and any unregistered marks (which are validated by a court) with the “Trade Mark Clearing House”. This gives the owner a 30 day priority period which they have the right to apply for a domain that exactly matches their mark. And when someone attempts to register a domain name that matches the mark recorded in the Clearing House, the owner will be alerted.
Feel free to get in touch if you have any issues like the ones above.
For more information on Industry member, Tahir, visit his personal partner page on the Sheridans website. To contact him directly, visit The Industry Directory, email firstname.lastname@example.org or telephone 020 7079 0103.