The ACPA holds a domain name registrant liable for the “bad faith intent to profit from that mark . . .; and registers, traffics in, or uses a domain name that–in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark.” ICANN’s UDRP Rules essentially tells you are not a cybersquatter if: (1) you do not register a domain name incorporating the trademark of another; (2) you have a legitimate interest in a domain name to which another does not have rights; and (3) you registered and are using the domain name in good faith. While this is guidance for domain name attorneys, I have compiled some more practical advice to avoid being pegged as the dreaded “cybersquatter.” Please note that none of this is to be considered legal advice and you should consult with a trademark and domain name attorney before purchasing a domain name.
- Consider the possible trademarks encompassed in and rights of others to a domain name prior to purchasing it. The best way to do this is to remember the word “generic,” and how that classification can save you from a trademark owner who is pursuing your domain down the road.
- Properly budget for domain name investigation, purchase, and protection in the same way you would for other valuable property, such as a home. There are experts available to help, you just need to utilize them.
- Quantify the risk of trademark infringement and ACPA lawsuits for the domains in your domain name portfolio. If you discover high risk domains, you want to be prepared to not only relinquish the domains, but also get a release of all liability for doing so.
- Properly respond to threat letters and other inquiries so as to minimize your risk of being subjected to the UDRP or an ACPA lawsuit. Don’t go at it alone thinking that you understand the intricacies that have caused others to face $100,000 penalties per domain registration. Your response may be evidence of bad faith that can be used against you under both the ACPA and UDRP.
- Properly evaluate the merits of a UDRP or ACPA Complaint. A domain name and trademark attorney is an absolute must.
These are critical considerations that may not always receive the attention they deserve. While this list is not exhaustive, it does provide insight into what every domain name owner should be doing, both before and after purchase of a domain name.
A recent article noted that “Simplicity Rules!” when it comes to domain name acquisitions. While this is partly true, the better way to say it would have been: Simplicity Rules; As Long As You Are Not Cybersquatting. Domainers willing to pay five and six figures for a single domain name need to ensure their investment is legitimate and protectable. If successful, a domainer can avoid becoming a cybersquatter.
Source: Brian Hall writing for DomainNews.com - March 20th, 2008