The term "cybersquatting" refers to registering, using, or selling a domain name with a bad faith intent to profit from someone else's trademark. In the 1990s, when many companies were just beginning to realize the significance of the Internet, cybersquatters would register domain names using trademarks in the hopes of later selling the domain names to trademark holders at exorbitant prices. Congress cracked down on this problem in 1999 when it passed the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d). The ACPA gives a trademark holder the ability to bring a federal lawsuit against someone for cybersquatting. A cybersquatting claim is related to trademark infringement and trademark dilution, discussed in What Trademark Covers, but it is a separate legal claim with its own requirements.
Although not many citizen media creators speculate on domain names for profit, an online publisher may have other reasons to worry about a potential cybersquatting lawsuit. A website operator or blogger might want to register a domain name that includes a company's or individual's trademark in order to criticize, comment, or report on the activities of the trademark owner. For instance, gripe sites like fallwell.com and lowes-sucks.com, as well as fan sites like MarianoRivera.com, have been sued or threatened with suit because of their domain names. Similarly, in 2007 the Academy of Motion Picture Arts and Sciences sued the academy awards-related website, Oscarwatch.com (now operating as Awards Daily), for violation of the ACPA, among other trademark claims. The case settled without a court determining the merit of the Academy's claim.
In most cases, if the trademark is relevant to the content of your website or blog, and you use the mark to engage in legitimate commentary, criticism, or reporting, there is a good chance that a court would not hold you liable for cybersquatting. This is not a sure thing, however, and it does not mean that a trademark owner will not threaten you with a lawsuit or file a lawsuit against you. If you are faced with such a situation, it is important to understand what the ACPA prohibits and what it does not. Below we provide more detailed information on the basics of a cybersquatting claim.
What Activities Violate the ACPA
Under the Anticybersquatting Consumer Protection Act, a plaintiff needs to show that the defendant registered, used, or sold a domain name containing language that is identical or similar to the trademark owner's trademark with a bad faith intent to profit from the domain name. A trademark owner that wins a cybersquatting lawsuit can recover money damages (including maximum statutory damages of $100,000 per act of cybersquatting) and get an order canceling the defendant's registration of the offending domain name or transferring it to trademark owner. A court may also award attorneys' fees to a winning trademark owner under "exceptional circumstances" -- basically, when the court determines that the defendant willfully or intentionally engaged in cybersquatting.
The key question in a cybersquatting case is whether the person registering, using, or selling a domain name has a bad faith intent to profit. Courts consider nine factors in determining whether a defendant has such a bad faith intent:
- the trademark or intellectual property rights of the defendant in the domain name;
- the extent to which the domain name consists of the defendant's name;
- the defendant's prior use of the domain name in connection with the bona fide offering of goods or services;
- the defendant's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
- the defendant's intent to divert consumers from the mark owner's online location to a site accessible under the domain name, either for commercial gain or with an intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
- the defendant's offer to transfer or sell the domain name to the trademark owner or any third party for financial gain;
- the defendant's giving false contact information when applying for registration of the domain name;
- the defendant's registration or acquisition of multiple domain names that are identical to or confusingly similar to the trademarks of others; and
- the extent to which the trademark incorporated in the defendant's domain name registration is or is not distinctive.
While the courts have applied these factors in different ways, and the result of a multi-factor test like this is hard to predict in advance, a few significant points are worth mentioning:
Noncommercial use rarely amounts to bad faith. Courts often give great weight to the fourth factor -- a bona fide noncommercial or fair use of the trademark in a site accessible under the domain name. The legislative history of the ACPA makes clear that a "noncommercial use" includes "comment, criticism, parody, news reporting, [and similar activities]." S Rep. No. 106-140, at *9. If you use your website to engage in these activities and do not offer goods or services for sale or include links to commercial websites, you are more likely to succeed against a cybersquatting claim. For example, in Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005), the court found that a website operator did not have a bad faith intent to profit when he used the website in question to criticize the social and religious views of the Reverend Jerry Falwell. Similarly, in TMI Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004), and Lucas Nursery & Landscaping v. Grosse, 359 F.3d 806 (6th Cir. 2004), the courts found that the defendants did not have a bad faith intent to profit and focused on the fact that the defendants were using their websites to engage in consumer commentary and criticism rather than for commercial gain. On the other hand, in Coca-Cola Co. v. Purdy, 3821 F.3d 774 (8th Cir. 2004), the court held that an anti-abortion activist violated the ACPA, despite the plainly religious and political character of his speech, because his websites solicited monetary contributions and sold merchandise. Note too that the activist registered domain names like "drinkcoke.org" and "mymcdonalds.com," which had no relation to his anti-abortion message.
Do not register multiple domain names or offer to sell a domain name to the trademark owner. Courts are aware that Congress passed the ACPA to fight the practice of cybersquatters registering multiple domain names in an effort to sell them to the legitimate owners of the trademarks. If you register more than one domain name, your activities look more like the harm that Congress meant to prevent. If you offer to sell the domain name in question, even after a trademark owner has threatened you with a lawsuit, it may look like your real purpose for registering the domain name was to extort money, not to engage in legitimate criticism, commentary, or reporting. Along these same lines, be sure never to give false contact information to the domain registrar when registering a domain name. When a court sees a website operator exercising his or her free speech rights and not engaging in these types of abusive behavior, it will likely conclude that no bad faith intent to profit is present. See for example Lamparello, Lucas Nursery, and Maxwell, and compare with the result in Purdy, where the defendant registered multiple domain names and offered to turn over one domain name in return for space on the editorial page of a trademark owner's newspaper.
Make it clear that you are not affiliated with the trademark owner. Courts also consider whether the defendant intentionally confuses Internet users as to the affiliation of the website. If you include a prominent disclaimer and a link to the trademark owner's official website, this may help show that you have no bad faith intent to profit. This is especially important if you are trying to make your site a parody of the trademark owner's site. In addition, you may have better luck on all types of trademark claims if you include something in the domain name itself that makes it clear that you are criticizing or commenting on the trademark owner, such as a "sucks" designation.
If you would like additional details about the ACPA and what constitutes a bad faith intent to profit, consult the Chilling Effects FAQ about ACPA.
Uniform Domain Name Dispute Resolution Policy
Besides bringing a lawsuit in federal court, a trademark owner who believes that someone else is violating his or her trademark rights through cybersquatting can use the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP is an online dispute resolution mechanism administered by the Internet Corporation for Assigned Names and Numbers (ICANN). Under the UDRP, ICANN can cancel an improperly registered domain name or order a losing party to transfer the domain name to the winning party. The purpose of UDRP is to provide a cheaper and more efficient mechanism for resolving cybersquatting disputes. If you believe that someone is cybersquatting on a domain name that rightfully should be yours, bringing an action under the UDRP may be a cheap and easy alternative to a lawsuit. Note, however, that a losing party in a UDRP proceeding may sue in federal court to reverse the outcome. Importantly, if a court determines that the person initiating a UDRP proceeding knowingly misrepresented that the challenged domain name was "identical to, confusingly similar to, or dilutive of [his or her] mark," then it may award the other party damages and attorneys' fees. See 15 U.S.C. § 1114(2)(D)(iv).
For more details on the UDRP, see the Chilling Effects FAQ about UDRP.