On April 21st, 2021, a 30-year-old web designer from Argentina bought www.google.com.ar for $2.90. Google quickly reacquired its domain name following the unintentional public offering, but this story highlights domain names’ legal grey areas. Nearly anyone can purchase available domain names without explaining their connection to the requested web address. It often surprises aspiring website owners to learn that someone else owns multiple variations of their businesses’ associated domain names.
However, the primary domain name dispute regulator is a private non-profit organization called ICANN. This organization adheres to the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”), which states that resolving domain name disputes generally requires legal action. Specific federal statutes also protect trademarked domain names from unsavory purchasers in the United States. At McClanahan Powers, PLLC, we might help Virginia & D.C. business owners understand their web address rights and navigate the complex domain name dispute process. Schedule a confidential web address protection consultation today by calling (703) 520-1326 or contacting us online.
Filing Cybersquatting Claims in Federal Court
Nearly anyone can register a domain name with a private internet registrar such as GoDaddy or Google Domains. Trademark owners do not obtain automatic domain name rights upon trade or service mark registration. However, you cannot trademark domain names already purchased and registered by another entity. Domain name disputes frequently arise when business owners realize that the domain owner purchased the web address in lousy faith after visiting the associated website. Cybersquatting or cyberpiracy occurs when an individual or entity intentionally buys up domain names associated with legitimate businesses to resell those web addresses for profit. In other words, they hold needed domain names hostage.
Under the Anti-Cybersquatting Piracy Act (“ACPA”), trademark holders may sue domain name owners who purchased identical or confusingly similar web addresses with the intent to profit from another’s trademark in bad faith. Examples include using a trademarked slogan as a domain name to direct online traffic to counterfeit goods or unrelated websites. However, the trademark owner must qualify for legitimate federal trademark protections. Courts weigh the following nine factors in determining whether the current domain owner violated the ACPA in bad faith:
- Whether the trademarked domain name falls under the fair use policy
- Whether the website owner has a legitimate basis for using the domain name, i.e., has the same legal name or nickname
- Whether the web address holder has other trademarks or property with the same or similar name, i.e., same business name in another state
- Whether the domain owner intentionally provided false contact information when purchasing the domain
- Any legitimate prior use of the domain name to provide goods or services
- The fame and distinctive nature of the trademark
- Any intent to divert legitimate business from the trademark owner that could harm the trademark owner’s goodwill and confuse consumers
- Whether the registrant is sitting on a warehouse of similar trademarked web addresses
- Whether the domain name owner offered to sell the web address to the trademark holder
Federal courts balance these factors in determining whether the current domain name holder purchased the trademarked domain name in bad faith. If so, the court may order the domain name transferred to the legitimate trademark holder. This process requires expensive federal litigation, but it also provides financial damages. Successful trademark owners can obtain control of their associated web addresses and recover between $1,000 and $100,000 in monetary damages per eligible domain name. The legislation also permits trademark owners to sue the domain name itself if the holder intentionally hides or misrepresents his identity.
Electing International Arbitration under the UDRP
ICANN’s Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) often provides a faster and more economical means of resolving domain name disputes. The international arbitration process under the UDRP allows trade or service mark owners to bring administrative proceedings against the alleged offender. To prevail, complainants must show that:
- The current owner registered the designed domain name or substantially similar web addresses
- The owner registered these domain names in bad faith (similar to the factors addressed in the ACPA)
- The current owner has no rights or legitimate interest in the domain names at issue
- The domain name is identical or confusingly similar to the complainant’s lawfully owned trade or service marks
If the complainant prevails, ICAAN will automatically transfer or cancel the domain names at issue. This process does not provide damages or other financial remedies, but it does not require registering court orders and pursuing expensive federal litigation. If you only desire to recover domain names associated with your trademark, you might benefit from discussing ICANN arbitration with a web address dispute lawyer at McClanahan Powers, PLLC.
Resolving Domain Name Disputes through Private Legal Negotiations
Only registered trademark holders may sue for associated domain names under the ACPA or arbitrate under the UDRP. Further, the trademark owner must show that the current domain name owner acted badly when purchasing the desired web address. If you do not hold a trademark or the current owner has legitimate reasons for buying the domain, it’s best to negotiate a private purchase. Domain name holders might readily agree to sell their current web addresses for the right price. Some cybersquatters even name their price upfront. An attorney can help Virginia and D.C. business owners negotiate legitimate domain name sales or mediate disputes. Parties may agree to alter their designed domain names to avoid consumer confusion or include disclaimers on associated websites.
Private mediation often results in the fastest, most cost-effective means of resolving domain name disputes. However, not every domain holder willingly comes to the negotiating table. Therefore, if your business suffered reputational damages from cybersquatters or the holder refuses to sell its domain name, you might need to take legal action.
Discuss your Virginia & D.C. Web Address Disputes with Legal Counsel at McClanahan Powers, PLLC
A domain name disputes attorney at McClanahan Powers, PLLC, can help you determine the best course of action for resolving web address disagreements. Whether you want to trademark available domain names, negotiate a private sale, or sue to recover your website rights, discuss your claims with our dedicated domain name resolution lawyers today by calling (703) 520-1326 or contacting us online.