Trademark Cybersquatting is the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit to the trademark owner or a third party. The AnitCybersquatting Consumer Protection Act (“ACPA”) is a federal law enacted to thwart such cybersquatters who register Internet domain names containing trademarks with no real intent to create a website but instead with the bad faith intent to profit from the good will of a registered trademark.
Elements to Prove a Cybersquatting Case
A trademark owner must prove the following elements to bring a successful Cybersquatting Case:
Bad Faith Intent to Profit from a Trademark Key Element
The ACPA gives the courts some guidance to assist it in determining if the requisite bad faith exists. Although not exhaustive, below is a list of some factors the courts consider in determining bad faith:
ICANN’s Uniform Dispute Resolution
Instead of suing in federal court under the ACPA, a trademark owner can choose to pursue an administrative proceeding under the Internet for Assigned Names and Numbers (“ICANN”)’s Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP allows a trademark owner to challenge domain name registrations in expedited administrative proceedings. In a UDRP proceeding, a victorious trademark owner receives an order from an arbitration panel that the domain name be cancelled or transferred to the trademark owner. A UDRP proceeding can be faster and cheaper for trademark owners than a lawsuit. However, some trademark owners prefer to bring ACPA claims because they offer more remedies than the cancellation or transfer of the domain name (the only remedies available under UDRP proceedings). Also, a suit under the ACPA may deter future cybersquatters more effectively than a UDRP proceeding.