Recently, the Internet Corporation for Assigned Names and Numbers ("ICANN") announced a new technology which will allow businesses and individuals to register domain names in non-English languages such as Arabic, Chinese, Japanese, Korean, Portuguese, the Scandinavian languages, and Spanish. Also, in a recent effort to relieve pressure on the overcrowded .com, .org, .edu and .net domain name spaces, ICANN tentatively approved seven new generic top-level domain names, including .biz, .info, .aero, .coop, .museum, .name, and .pro.
Many countries also have made available to the general public their top-level country code domains, such as .mu for the small island country of Mauritius, .tv for the island country of Tuvalu, .am for Armenia, and .fm for Micronesia. These particular domains are being marketed to the music and entertainment industry.
The United States Patent and Trademark Office ("USPTO") does not currently recognize a difference between a mark and its domain name equivalent. Thus, if a company has registered a mark with the USPTO, it need not also register the mark with a traditional domain name ending. However, the recent ICANN and international developments in the domain name arena give cybersquatters the opportunity to seek domain names in the new formats that may contain the owner's trademark. You should be aware of the options described below for protecting valuable intellectual property from such threats.
1. Obtain Domain Names That Reflect Variations of Your Trademark
The easiest and least expensive way to protect your trademarks against cybersquatters is to register numerous domain names that reflect variations on the trademark. For example, the owner of the trademark "Spycam" might obtain domain names such as "Spycam.com", "Spycam.tv", "Spycam.fm", and "Spycam1.com", "Spycam2.com", and "Thespycam.com". Trademark owners involved in foreign markets might want to include domain name registrations in the new multilingual formats.
2. Cease and Desist Letters
If a cybersquatter already has obtained a domain name using your trademark, or one that is confusingly similar to your trademark, you have several options for protecting the mark. First, you may send a cease and desist letter to the domain name holder demanding that it terminate all use of the domain name. In many instances, these letters succeed in obtaining cancellation of the domain name or transfer of the domain name to you without the expense of litigation.
If a cease and desist letter yields a negative or no response, two possible courses of infringement action exist for the trademark holder - one being far less costly than the other.
3. Uniform Dispute Resolution Policy
First, you may initiate an administrative proceeding against the holder of a domain name that is identical or confusingly similar to your mark under the ICANN Uniform Dispute Resolution Policy ("UDRP"). Under the UDRP, a trademark owner ("complainant") may submit a complaint to an approved administrative panel, such as the World Intellectual Property Organization. To be successful, the complaint must demonstrate that 1) the domain name is identical or confusingly similar to a trademark in which the complainant has rights, 2) the domain name holder has no rights or legitimate interests in the domain name, and 3) the domain name was registered and is being used in bad faith. Under the UDRP, the only remedies available to a complainant are cancellation or transfer of the domain name; no damages can be awarded. The filing fee for a UDRP complaint is approximately $1,000 - $2,000. Because of the truncated nature of this administrative proceeding (which does not utilize evidentiary hearings), the UDRP process is far less expensive and faster than formal litigation - often taking only two to three months.
4. Infringement Action in a U.S. Court
Another option is to bring suit against a domain name holder in U.S. federal or state court for trademark infringement and/or cybersquatting.1 The U.S. Anti-Cybersquatting Consumer Protection Act holds persons who register or use a domain name which is identical or confusingly similar to another's trademark with a bad faith intent to profit from such use, civilly liable. Bad faith may be proven, for example, if the alleged infringer offers to sell his domain to a trademark owner for more than the cost of registering the domain, or if the infringer has offered to sell other domain names to other businesses (demonstrating that the infringer is a "warehouser" in the business of merely "squatting" on domains to sell them for profit). Other factors to be considered are whether the holder uses the domain name as part of a trademark for which it has sought registration or whether it uses the domain name to link to services that are competitive to the complainant's services.
While a successful trademark infringement or cybersquatting claim might bring cancellation or transfer of the domain name as well as damages, the cost of litigation could well exceed several hundred thousand dollars because of the amount of time and legal effort involved. In addition, because U.S. trademark infringement claims against domain name holders are relatively new areas of developing jurisprudence, obtaining the desired resolution may be less certain than utilizing a UDRP proceeding.
Footnotes
1 For this avenue to be available, however, the domain name must have been registered by a company located in the U.S. or through a U.S. registrar, such as Network Solutions, Inc. or dotTV Corporation.
