How Can I Recover My Domain Name?
What can be done in Georgia when cybersquatters and infringers get your URL
on May 19, 2020
Updated on February 8, 2021
When you start a business in Georgia, one of the first steps you should take is registering a domain for your company's website. In many cases your domain will incorporate the trademark or service mark that identifies your business. But what if someone beat you to the punch? Since the early days of the Internet, people have tried to turn a quick buck by “cybersquatting,” i.e., registering and selling a domain name that relies on the trademark or “good will” of another business.
First, it’s important to understand what is and is not cybersquatting. “Cybersquatting is not necessarily someone owning a domain name that someone else wants,” explains Joel R. Feldman, an intellectual property attorney in Atlanta. “It is someone owning a domain name for which someone else already owns the rights, and they didn’t have a legitimate right to own it.”
Generally, the first one to register a domain name has the right to keep it. The exception is if someone else already has trademark rights in the underlying words of the domain name. Unfortunately, this type of infringement is “very common,” Feldman says. “A lot of brand owners will have watch services that will alert them any time a domain name is registered with an element in it.”
Fortunately, if you are a victim of cybersquatting, you do have two potential legal remedies. The first is to file a lawsuit under a federal law, the Anticybersquatting Consumer Protection Act. The second is to seek arbitration under the Uniform Domain Name Dispute Resolution Policy (UDRP), which is administered by the Internet Corporation of Assigned Names and Numbers (ICANN).
A lawyer may prefer to resolve a domain name dispute through the ACPA if your case is complex, or if the basic facts are unclear. The ACPA is a U.S. law that allows trademark owners to sue anyone who registers, sells or uses an Internet domain that is “identical” to or “confusing similar” to the mark.
“ACPA, just like any trademark dispute, means going to federal court and filing a lawsuit, being in front of a federal judge, discovery and everything else that is involved in a federal court action,” Feldman says.
The ACPA places the burden on the trademark owner to prove that the cybersquatter has acted in “bad faith.” In proving this, a court will look at a number of factors, including the following:
- Did the party that registered the domain have any trademark or intellectual property rights in that name?
- Is the domain name in question the legal name or “nickname” of the registrant?
- Had the registrant previously used the domain name “in connection with the good faith offerings of goods and services”?
- Is the registrant using your name or trademark for a legally recognized “fair use,” such as “comparative advertising, comment, criticism, or parody”?
- Is the registrant intentionally using the domain to harm your good will, such as by redirecting traffic to confuse potential customers?
- Is your trademark or name sufficiently “distinctive” or “famous” enough to warrant protection?
If a judge determines that cybersquatting has occurred, the court will order the registrant to transfer the domain name to you. However, if the registrant can show they had a “good faith” reason for registering and using the domain, the judge will probably let them keep it.
Along with the domain name, “you can recover some damages on that statute, and sometimes actual penalties,” Feldman says.
ICANN is the non-profit organization that oversees the work of Internet domain registrars. When you register a specific domain, your registrar requires you agree to certain terms and conditions with ICANN. This includes submitting any potential dispute over domain ownership to binding arbitration under the UDRP.
Generally, resolving a dispute through UDRP is faster, less expensive and fairly private. “If it’s a straightforward case, the UDRP is usually very efficient,” Feldman says.
The legal standards for cybersquatting under the UDRP are similar to those in the ACPA. There are three basic questions: “Does the plaintiff have rights to the trademark?”, “Does the domain name owner have any legitimate rights?”, and “Is a domain name owner using the domain name in bad faith?”.
“UDRP cases are decided by one of two entities, either the World Intellectual Property Organization or the National Arbitration Forum,” Feldman says. “There are panelists from around the world, and they basically review and decide, usually within two months, and then that decision is binding on the registrar. … All of the UDRP structure is arbitrational and contractual in nature.”
If you prevail in arbitration, the registrar will cancel the domain or transfer it to you. The main difference between arbitration and litigation is that in the latter, you may be entitled to monetary damages. ICANN arbitration, in contrast, does not include any remedies beyond control of the domain itself.
UDRP rules don’t apply to all domains. “Most countries have their own,” Feldman says. “They all have the same general elements, but some have time limitations and other things like that.”
An Experienced Lawyer Can Help
How your case is handled will depend on the specific facts involved. But whichever side of the dispute you find yourself on, an experienced attorney can help. “The legal questions behind a UDRP case are fairly complex,” Feldman says. There are variations in the rights held by domain name owners, there is risk in filing a baseless or abusive complaint, and there are several variables to consider when attempting to prove “bad faith.”
“As a brand owner, if there’s a cybersquatter or a potential cybersquatter and you want to know your options, it’s good to have an attorney to evaluate these,” Feldman says. “If you have a domain name and you receive a cease and desist letter or you receive a complaint, it’s important to have an attorney to explain your defenses and to evaluate whether or not you’ve actually done anything actionable.”