by Richard Keyt, Domain Name Law attorney
More than 271,000,000 domain names have been registered as of the end of 2013, including hundreds of thousands of domain names that infringe on trademarks and service marks. If you own a trademark or service mark (whether federally registered or not), do you know if there are any domain names that infringe on your trademark? Trademark owners have a duty to police their marks and prevent other parties from infringing on their trademarks and service marks.
Hire a Search Firm to Monitor Mark Usage
Before a trademark owner can take action to prevent unauthorized use of a trademark, the mark owner must determine that the mark is being used improperly. The traditional method of finding trademark infringement has been to hire a reputable trademark search firm such as Thomson & Thomson to monitor usage of a mark in commerce in the United States. Many trademark search firms now offer fee based services that also monitor domain names for trademark infringement.
Use the Internet to Conduct Free Mark Usage Searches
Trademark owners who do not want to pay a search service to find cybersquatters can use the internet to search for infringing domain names. Godaddy is the web site I use to find .com, .net and .org cybersquatters because when you search a text string, Godaddy will find all domain names that contain the text string.
If your search for a domain name finds that it is has been taken, you can find out more about the registrant by doing a whois search at DomainTools. Review the “whois” record link that may indicate information about the registrant of the domain name such as the registrant’s name, address, phone number, email address, date created, expiration date, and similar in formation about the administrative, billing and technical contacts. See Who Controls Your Domain Name?
Sample Whois Search
The following is the result of a Whois search for the text string “hot tuna”:
If I owned a trademark for “tuna,” I would investigate each of the above websites to determine if any of the web sites is infringing on my mark. I would also check the United States Patent & Trademark Office’ Trademark Electronic Search System to determine if any of the web site owners have a federally registered trademark or service mark, which would probably prevent me from bringing a cybersquatting claim against the trademark owner.
If You Find Domain Names that are Identical or Similar to Your Mark
If you find any domain names that contain alpha-numeric strings that are identical or similar to your trademark (whether federally registered or not), you may have a claim against the cybersquatter under the Anticybersquatting Consumer Protection Act (ACPA) and ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). Remedies under the ACPA include actual damages or statutory damages up to $100,000 per domain name and a court order that the domain name(s) be transferred to the mark owner. The sole remedy under the UDRP is that the domain name be placed on hold or transferred to the mark owner.
Hire a Domain Name Attorney to Pursue an ACPA or UDRP Action
If you believe that somebody has registered a domain name that may infringe on your trademark or service mark, you should consult with a domain name attorney to determine if it would be prudent to file an ACPA or UDRP action to obtain the domain name and prevent the domain name registrant from future use of the domain name. Many times a cease and desist letter from an attorney coupled with a demand to transfer the domain name is sufficient to cause a cybersquatter to transfer the domain name. See KEYTLaw’s sample cease & desist letter. If the cease and desist letter does not get the desired result, a UDRP arbitration is the quickest (40 -45 days or less) and cheapest route to obtain the domain name. See ICANN’s Uniform Domain Name Dispute Resolution Policy FAQ. An ACPA lawsuit is more expensive and generally takes longer than a UDRP arbitration, but it is the way to go it you want money damages or other remedies such as an injunction prohibiting further infringement. See Anticybersquatting Consumer Protection Act FAQ.
In conclusion, trademark and service mark owners should hire a search firm to monitor their marks and inform them of usage and possible infringement and cybersquatting. Trademark owners who do not want to pay the annual fees for a search service, should use an internet domain name search engine such as Whois.net at least once a month to search for domain names that contain alpha-numeric strings that are identical or similar to their marks.