CYBERSQUATTING
Cybersquatting is defined as the practice of bad faith registration, trafficking, or use of a domain name to profit from someone else’s trademark. It is a well known problem that’s unlikely to disappear with the introduction of the new generic top-level domains (TLDs). But while the squatters persist, the ways they can be stopped are also increasing.
Traditional ways to solve the problem
Te first step (aſter collecting the evidence and deciding whether it’s worth dealing with the case at all) is the traditional cease and desist letter to the domain holder. Although the holder’s contact details are not always available, using a proxy/privacy service, the majority of domain disputes are resolved at this stage, making it both time and cost-efficient.
One reason for this is the holder’s fear of being blacklisted: the specific domain name may have been registered and used for pay-per-click but the holder does not want to be listed as a ‘bad guy’, and knows he is likely to lose a domain dispute case if the brand owner can prove it has trademark rights.
If this initial correspondence is unsuccessful,
however, it is possible to proceed with a lawsuit under the US Anti-Cybersquatting Consumer Protection Act (ACPA), or claim for arbitration under the Uniform Domain Name Dispute Resolution Policy (UDRP), or one of the many similar country code dispute resolution systems.
Canadian and Swedish ways to solve common disputes
In Canada, .ca domain names are available in ASCII (American Standard Code for Information Interchange), otherwise known as non-accented Latin-based script (A–Z).
Te Canadian Internet Registration Authority (CIRA) now proposes to implement French Internationalised Domain Names (IDNs), which involves the ‘bundling’ of characters. Tis means that the registrant of a particular domain name would have the exclusive right to register all variants of that domain name, stopping anyone else registering any of those domains. Tis also means that when transfer of a domain name takes place because of a dispute,
www.worldipreview.com
“MONITORING DISCUSSIONS AND RECOMMENDATIONS REGARDING YOUR TRADEMARKS ON SOCIAL NETWORKS IS ALSO AN EFFECTIVE WAY OF IDENTIFYING SOURCES OF MISUSE.”
all variants of the domain name would also have to be transferred.
Currently, no other registrars use the bundling concept for western European characters, however the concept is used for simplified and traditional Chinese characters in the .biz, .org and .info spaces.
In Sweden, the Board of the Internet Infrastructure Foundation (IIS), operator of the .se TLD, recently introduced a ‘fast track’ version of
the Swedish
Dispute Resolution Policy for all common cases where the holder of a domain name that is confusingly similar to someone else’s trademark does not reply to the complaint. Although the panellist still has to examine the case fully, there will be a decision within 10 working days at a much lower cost than for a full case.
Te Canadian and Swedish policy changes both provide administrative ways to avoid someone else registering a number of common language versions of your trademark as a domain name, and allow for a faster and more cost-efficient resolution of cases where the domain holder, by not replying, indicates bad faith registration and use.
Other ways to deal with cybersquatters
Tere have been a number of domain name dispute cases around the world where someone critical of a company has tried to spread ‘information’ on that company’s trademarks, goods and services. Instead of always using the domain name dispute resolution process, many companies respond by posting comments on that specific site, or their own site, or using the discussion on social networks—a perfect way to destroy or strengthen your trademark. Monitoring discussions and recommendations regarding your trademarks on social networks is also an effective way of identifying sources of misuse, finding out which legally perfect, but competitive, trademarked products customers refer to, and finding links to and recommendations of pirate copies and other trademark misuse.
Another way to minimise the risk of cybersquatting is to register the relevant domain names in your own name from the beginning. Tis is especially useful if you can identify risks for common misspellings or typos. For example, if your trademark includes double letters such as ‘tt’, register a version with a single ‘t’ as well. If it contains ‘ck’, register versions with ‘kk’ or a single ‘k’. It is also a common misspelling of the letter ‘o’ to use the number ‘0’ (zero) instead.
Don’t forget the basics
Crucially, do not forget to register your new trademark or company name as a domain name before you send out the press release of the new product or merger. It may sound very basic, but even large and otherwise well protected companies have neglected to do this, only to see cybersquatters register hundreds of versions on the same day as their press conference.
Finally, the easiest way to keep the domain names you want to use is to have a safe and updated administrative domain management system in place to ensure that domains are renewed on time.
Petter Rindforth is the senior partner of Fenix Legal KB, Sweden. He
petter.rindforth@fenixlegal.eu
can be contacted at:
Petter Rindforth, LLM, is a trained mediator and serves as a domain name dispute panellist for WIPO, NAF, the Czech Arbitration court and IIS/.SE. He is also special reporter (domain names) for the IP organisation FICPI, and represents FICPI in ICANN’s IP Constituency (IPC).
Trademarks Brands and the Internet Volume 1, Issue 2 41
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