educational

Domain Name Theft

John Yates
You can fight back against cybersquatters, typosquatters and Internet pirates siphoning traffic away from your website by using one of a few methods currently available to protect your domain name. The odds of success often are good, and the cost is usually manageable. XBIZ describes and evaluates the legal tools here.

Suppose your successful high-traffic website is located at BlueZone.com. You've been operating for two years, traffic has increased each month, and consumers go to your site because they know it displays, sells and links to quality adult product in the MILF genre. Your traffic suddenly drops substantially, and you soon learn why: an Internet pirate has just registered and activated websites located at BlueZones.com, BlueBone.com, and BluZone.com. You run Whois searches on these domain names and locate the hosting company and a registrant, but are unable to identify the person or company that actually owns these domains.

Under the circumstances outlined above, you should strongly consider initiating an arbitration proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP), which applies to all domains ending with .com, .net and .org. Your goal will be to have the pirate domain names either canceled or transferred to you, which are the only two remedies a UDRP arbitration permits. In order to win, you must prove three facts: 1) the pirate domain names are identical or confusingly similar to a trademark or service mark to which you have rights; 2) the pirate has no rights or legitimate interests in the confusingly similar domain names; and 3) the pirate has registered and used the confusingly similar domain names in bad faith.

In most UDRP arbitrations, the most difficult fact to prove will usually be that you have trademark rights in or relating to the domain name. If you have registered the word "BlueZone" as a trademark, then you will not have a problem, because your trademark rights are demonstrated by your registration. If you haven't registered BlueZone as your trademark, you will have to provide the arbitration panel with some evidence that consumers identify "BlueZone" with your site, and with a specific kind of product.

Traffic figures, industry awards for BlueZone, advertising campaigns to promote the mark and the website, and evidence of product marketed under the BlueZone brand will all help you prevail.

Compared to the alternatives, a UDRP proceeding is a true bargain. Arbitration fees usually range from $1,300 to $3,500 in a proceeding involving one or two domain names and one to three arbitrators, and attorney's fees from $3,000 to $8,000. Cost varies depending on whether the pirate fights to keep the confusingly similar domains, and on your attorney's hourly fee. Filing the complaint to getting a decision usually requires 60 days or less. You don't need a registered trademark to prevail, and you don't need to know who or where the true owner of the pirate domains is. Against these clear benefits, you should also know that UDRP remedies are very limited. Also, the UDRP arbitration can only deal with domain names that actually exist when the proceeding is commenced. Even if you win, the pirate can register additional confusingly similar domains, and start the same problem all over again.

UDRP arbitrations are particularly appropriate to protect stage names, and domain names using stage names, from pirates. Typically, evidence of your appearance in several videos under the same stage name will be sufficient evidence of your trademark rights in the name to shut the pirate down, or transfer the offending domain name(s to you.

Court Actions Under Federal Trademark and Unfair Competition Statutes Anti-Cybersquatting Consumer Protection Act (15 U.S.C. §1125(D))
Under the same hypothetical facts outlined above, and assuming that the true owner of the pirate domain names cannot be located, you may protect your Bluezone trademark, and BlueZone.com, by filing what is called an in rem action under the Anti- Cybersquatting Consumer Protection Act (ACPA) in the federal court for the district in which the registrar of the offending domain name(s) is located. The action is called in rem because you are proceeding only against the pirate domain names, and not the pirate.

The prerequisite to filing an in rem action is proving to the court that you have either diligently tried, but failed, to identify the true owner of the domain names, or that you did identify the true owner, but are unable to compel the owner to show up to be sued. The true owner cannot be forced to appear, in most cases, if the owner resides outside your state, or outside the U.S. You will need to prove essentially the same facts in the ACPA in rem action as in the UDRP arbitration. As in the UDRP arbitration, the only remedies available in the ACPA in rem action are cancellation or transfer of the offending domain names.

The UDRP arbitration and the in rem court action under ACPA have similar benefits, but the UDRP arbitration is the better choice, for at least three reasons. First, the quantity of evidence required to win is greater in federal court than in the UDRP domain name arbitration. Second, the in rem action may require a lawsuit to be filed far from your home. For example, if AOL is the registrant of the pirate domains, you will need to file your in rem action in Virginia, where AOL is headquartered. Third, obtaining the same relief offered quickly through the UDRP arbitration is vastly more complex procedurally when you obtain it through your ACPA in rem action. This typically leads to higher attorney's fees. Higher attorney's fees are partially offset because federal judges, unlike UDRP arbitrators, do not charge for their time.

If you are able to identify the true owner of the pirate domain names, then you may file your ACPA action in any federal court in which the true owner can be compelled to appear. This will usually be the district or districts in which the true owner resides or does business.

In order to prevail in your ACPA action where you have identified the owner of the pirate domains and forced the owner to show up in court, you must prove that the owner registered them without any reasonable belief that doing so was lawful. Also, you must prove that the pirate domain names are confusingly similar to your BlueZone trademark, or that BlueZone is generally recognized by U.S. consumers, and the pirate domain names actually lessen ("dilute" in legal terminology) the ability of BlueZone to identify your high-quality MILF genre products. It generally will be easier to prove confusion, rather than dilution, although neither alternative is necessarily easy to prove.

If you win an ACPA action against the true owner of the pirate domains, then you will be eligible for all available remedies, including enhanced damages, ability to recover the pirate's profits from using the pirate domains, ability to recover your attorney's fees, transfer or cancellation of the pirate domains, and an order prohibiting the owner of the pirate domains from registering the domains, or any others like them, again. The large number of remedies available can make an ACPA action the better choice, in the right circumstances. Typically, those circumstances will include the ability of the owner of the pirate domains to pay you substantial damages, and a provable and substantial loss of business or traffic at BlueZone.com.

Trademark Infringement, and False Designation of Origin or Dilution (15 U.S.C. §§1114, 1125(A), (C))
You may wish to protect the BlueZone mark and BlueZone.com by simply filing a standard action for trademark infringement if you have registered BlueZone with the Trademark Office, or for false designation of origin or dilution if you have not. This choice eliminates the need to prove, as you must in the ACPA action, that the owner of the pirate domain names was acting in bad faith, and focuses more on the strength of the BlueZone mark. Otherwise, you must prove the same facts to win, and if you do win, you will have the same remedies as described above.

In summary, most of the time you will be able to adequately protect your trademark and domain name from various kinds of Internet piracy through the relatively cheap and fast UDRP procedure. The risk you run is that you will need to repeat the UDRP procedure continually if the pirate continues to register domain names confusingly similar to yours. If your trademark is strong, well-recognized, and has been in use for a long time, and you are able to identify the true owner of the pirate sites as a solvent person or business entity as well as compel the owner to show up to be sued, then ACPA or trademark litigation may be your best choice. Even though the total costs are likely to be significantly higher than for the UDRP arbitration, the broader remedies available may make the cost worthwhile.

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