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Understanding the legal options used to fight cybersquatting

Gerald M. Levine, Esq. | Jan. 15, 2015
Cybersquatting is defined as a violation of a business's right to exclusive use of its mark on the Internet.

Compressed in as little as a word or two, or perhaps an expressive phrase, trademarks communicate powerful stories about who businesses are and what they stand for. They are at once guardians of reputations, ambassadors of goodwill and advocates of consumption. They have two principal functions: distinguishing one business from another and signifying sources of goods or services. Trademarks are accordingly highly prized, and not only by their owners. They are targeted by predators in both the physical and cyber marketplaces. Thus, the need for owners' constant vigilance to police their marks and protect their integrity. This cannot be done without having an informed understanding of venues and remedies for infringement.

There is, however, a distinction between trademark infringement, which is defined as the unlawful use of a business's mark that is likely to cause confusion as to the source of goods or services, and cybersquatting, which is defined as a violation of a business's right to exclusive use of its mark on the Internet. In combatting cybersquatting businesses have a choice of legal regimes, which we will focus on here.

Until 1999 there was no quick or efficient remedy for removing infringing domain names from the Internet. In October of that year, the Internet Corporation for Assigned Names and Numbers, familiarly known by its acronym ICANN, implemented the Uniform Domain Name Dispute Resolution Policy (UDRP), which is an online, paper only arbitral forum for adhudicating claims of cybersquatting. In the same year, Congress passed and President Clinton signed into law a statutory regime to combat cybersquatting known as the Anticybersquatting Consumer Protection Act, or the ACPA. While the law is nested in the Trademark Act of 1946, commonly known as the Lanham Act, proof of cybersquatting is less demanding than proof of trademark infringement.

Expansion of the Domain Name Space

Based on the last Verisign Domain Industry Report, there are 280 Million registered domain names as of June 30th, 2014. On March 17, 2014 the World Intellectual Property Organization issued an assessment of the "unprecedented expansion of the Internet domain name space." This refers to the close to two thousand new domain name suffixes approved by the ICANN in 2013 that have steadily been entering the market in 2014 and will continue into 2015 and possibly beyond that.

The expansion, WIPO says, "is likely to disrupt existing strategies for trademark protection on the web." The new suffixes are mainly dictionary words like dot club, dot guru, dot photography and so on, and geographical locations such as dot NYC, dot London and numerous other city dots in the U.S., Canada, Europe, Australia, Russia, Africa and other countries and regions throughout the world.

 

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