Cybersquatting: The Elements and Available Remedies

//Cybersquatting: The Elements and Available Remedies

Your domain name is essential to the continued growth and development of your business—it ensures that people can connect to your products and services with ease. And as a result of the value of a domain name—cybersquatting has increased.

 

Cybersquatting is the practice of registering domain names, especially well-known company or brand names, with the intent to resell the domain names to the company or brand for a profit. Victims of cybersquatting include Panasonic, Fry’s Electronics, Hertz, and Avon. And even President Donald Trump has been the victim of cybersquatting.

 

Victims of cybersquatting may find relief by filing a claim under the Anticybersquatting Consumer Protection Act (“ACPA”) in federal court or through arbitration under the Uniform Domain Name Dispute Resolution Policy.

 

To prevail on a claim under the ACPA, a plaintiff must establish that (1) it has a valid trademark entitled to protection, (2) its mark was distinctive or famous at the time the domain name was registered, (3) the defendant’s domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owner’s mark, (4) the defendant used, registered, or trafficked in the domain name, and (5) with a bad faith intent to profit.

 

In regards to remedies, the ACPA authorizes several remedies for victims of cybersquatting including statutory damages, injunctive relief, and the transfer of the domain name, amongst others.  Further, the prevailing party is entitled to attorneys’ fees. Indeed, for statutory damages, a violation of the ACPA can result in liability of “not less than $1,000 and not more than $100,000 per domain name.”

 

For example, in Electronics Boutique Holdings Corp. v. Zuccarini, the United States District Court for the Eastern District of Pennsylvania found that the notorious cybersquatter John Zuccarini registered five domain names similar to the plaintiff’s in bad faith.  The court ordered the transfer of the domain names to the plaintiffs, permanently enjoined adoption of other domain names similar to the plaintiff’s marks and awarded the plaintiff statutory damages in the amount of $500,000—the maximum allowed under law ($100,000 per domain name). The court also ordered payment of plaintiff’s attorneys’ fees and costs.

 

Hutcherson Law handles domain name disputes and can help you determine whether to pursue arbitration or file a lawsuit in federal court. Contact Hutcherson Law today to begin the process of obtaining the relief that you deserve as a victim of cybersquatting!