CYBERSQUATTING: PREVENTION
AND REMEDIATION STRATEGIES
NET2002 – Washington, DC
April 18, 2002
Scott Bearby
Copyright
NCAA Associate General Counsel
Scott Bearby 2002. This work is the intellectual property of the author. Permission is
granted for this material to be shared for non-commercial, educational purposes, provided that this
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Cybersquatting defined
Uniform Domain Name Dispute Resolution
Policy - UDRP
Rules governing arbitration of disputes about
top-level domain names and some country
codes
Anti-Cybersquatting Consumer Protection
Act - ACPA
Statute relevant for infringement actions
brought in United States courts
UDRP Standard
(i) your domain name is identical or confusingly
similar to a trademark or service mark in which
the complainant has rights; and
(ii) you have no rights or legitimate interests in
respect of the domain name; and
(iii) your domain name has been registered and
is being used in bad faith.
ACPA - Standard
Use or variation of trademark or misleading
representation that is likely to cause
confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or
association or otherwise mislead
Cybersquatting: Strategy
Establish a budget
Domain names can be registered for as little as
$20/year
Consider registration of business critical
domain names
Those domain names that match a
trademark and those that are most important to
keep out of the hands of others
Cybersquatting: Strategy
Which domain name suffixes to choose?
.com, .net., .org
.info, .biz, and the other new “top levels”
“Sunrise” periods
Country codes
Commercially interesting letters
.tv., .ws, .us
Where you do business
UDRP
Binding arbitration agreed to by registrant at time of
registration.
Average arbitration fee is between $1,000 and $2,000,
depending on number of domain names at issue.
Process is streamlined with only electronic/paper
submissions.
Results can be obtained within several weeks from
submission.
Complainant receives transfer in over 60 percent of
cases completed.
When UDRP doesn’t work
Case studies
NCAABASKETBALLODDS.COM v.
NCAAMENSBASKETBALL.COM
FINALFOURMERCHANDISE.COM V.
FINALFOURSEATS.COM
Settlement
Consider a written agreement.
Need to include all offending domain names.
Hold any compensation to transfer and registration
fees; hold payment until all domains are transferred.
Obtain agreement not to register other related
domain names in the future.
Obtain jurisdiction clause if further misconduct.
Be vigilant to make sure registrar completes
transfer.
Taking It To Court
ACPA added to Lanham Act to assist courts
with application of traditional trademark law to
the Internet.
Effective November 29, 1999.
Retroactive characteristics.
Prospective remedies.
“Bad faith,” the critical element.
Litigation
Positives
Injunctive relief
Monetary damages
Negatives
Expensive
Experts
Attorney fees
Intrusive
Discovery
Part of the federal case backlog
Jurisdiction
Personal
“Doing business” on the web
Passive sites
Interactive sites
In Rem
Other causes of action
Trademark infringement
Statutory and Common Law
Trademark infringement –
proving likelihood of confusion
1) the strength or 5) the similarity of
distinctiveness of the the advertising used
mark;
by the parties;
2) the similarity of the
two marks;
6) the defendant’s
3) the similarity of the intent in adopting
goods or services that the same or similar
the marks identify; mark; and
4) the similarity of the 7) actual confusion.
facilities employed by
the parties to transact
their business;
Trademark dilution
Eight nonexclusive factors, including
the degree of inherent or acquired distinctiveness,
the duration and extent of the mark’s use,
the duration and extent of advertising and
publicity,
the geographic scope, the nature and use by third
parties,
and the registration on the United States Patent
and Trademark Office (USPTO) register
Unfair competition
unfair competition with respect to a
trademark is that 1) the name must have
acquired a secondary meaning or
significance and 2), defendant must have
unfairly used the name or a simulation of it
to the prejudice of plaintiff’s interest
Questions
