The United States Patent & Trademark Office has more than 3,000,000 registered trademark and service marks, all of which may be searched on its web site. More than 271,000,000 internet domain names have been registered. If you own a federally registered trade mark or service mark, there is an excellent chance that cybersquatters have registered domain names that are identical or similar to your mark. This can create great confusion among your customers, will cost you revenue, and can even prevent you from doing business online entirely.
One reason there are so many trademark infringing domain names is because of the sheer volume of registered domain names. There are a lot more domain names than words in the English language. The single biggest reason there are so many infringing domain names, however, is that for the most part, the public in general, and the domain name registrants in particular, are unaware of: (i) federal trademark laws, (ii) the legal significance and consequences of trademark infringement, and (iii) how to determine if a desired domain name might infringe on a trademark.
The domain name industry wants to keep the public ignorant about trademark law and its relationship to domain names. Issuing and selling domain names is a multi-million dollar business. The companies that issue domain names and the companies that facilitate domain name appraisals, auctions and sales all have a vested interest in the domain name market, so they are not likely to kill the goose that laid the golden egg by telling prospective domain name registrants and buyers that a particular domain name may actually be a ticket to a lawsuit or an ICANN arbitration procedure.
Mark Owners Must be Diligent in Finding Infringement & Taking Action to Protect Their Marks
The Lanham Act, the federal trademark statute, and the case law interpreting it, place a duty on trademark owners to take appropriate action to protect their marks when they discover infringement. It is possible for an owner to lose rights in a trademark permanently if the owner does not take necessary protective action to prevent infringement and improper use of the trademark. Owners with valuable trademarks and service marks should remember the phrase “Protect it or Lose it.”
How to Find Infringing Domain Names
Despite the existence of 271,000,000+ domain names, it is actually very easy for a trademark or service mark owner to find domain names that infringe on a mark. In a matter of a few minutes, a trademark owner can obtain a list of all domain names that contain text identical to a mark. It is simply a matter of going to a web site that provides a comprehensive database of registered domain names and performing an appropriate search. For a detailed explanation of finding infringing marks, see How to Find Cybersquatters Infringing on Your Mark. I frequently start with Domain Tools when looking for infringing domain names.
A Trademark Owner’s Options After Finding an Infringing Domain Name
A trademark or service mark owner who finds a domain name that is identical or confusingly similar to its mark has several options with respect to how to deal with the possible infringement. These options are not limited to registered trademarks; the owner of an unregistered or common law trademark may also be able to take action against a cybersquatter and obtain an infringing domain name.
The following is a non-exhaustive list of options (in order from least to most costly) available to a mark owner in combating infringing domain names:
- Do nothing. This is the easiest and cheapest course of action, but it runs the risk that the infringing domain names could damage the goodwill of the mark and/or result in the loss of the rights to the mark. Protect it or lose it.
- Send a Cease and Desist Letter on Your Letterhead. A first step in taking legal action against an infringer is often to send a letter known as a “cease and desist” letter. This often states something like: (i) I have a trademark (unregistered common law marks may be protectable), (ii) you are infringing on my trademark and causing me damage, (iii) you must immediately cease using the mark and not use it in the future, (iv) you must transfer the domain name to me, and (v) if you fail to take the action demanded, I’m going to turn the matter over to my attorney to take appropriate legal action, which includes a claim for damages. This is worth a try. This letter usually gets ignored, but if it works, it doesn’t cost you much more than your time. You will still have the option to escalate the matter if you desire. NOTE: Feel free to down load and use our sample cease and desist letter on your letterhead.
- Enter into a Trademark License Agreement with the Infringer. If the infringer is willing to enter into a license agreement governing the use of the mark (which may be unlikely), the mark owner can counter a claim that it failed to adequately police infringing uses of the mark with the argument that the other party was not infringing because it used the mark under the license agreement. The down sides to this alternative are that it may cost money to negotiate, prepare and sign the license agreement, the terms of the license may be less than satisfactory, and the licensee continues to use the mark.
- Hire a Lawyer to Send a Cease & Desist Letter. This approach costs money (maybe less than a lawyer prepared trademark license agreement), but it does greatly increase the chance that you will get the desired result. It is common for the infringer without substantial resources to comply with the mark owner’s demands rather than risk being the defendant in a lawsuit or an ICANN Uniform Domain Name Dispute Resolution Policy action. On the other hand, if the infringer is making money from the infringing domain name, it is likely that a lawyer’s cease and desist letter will be ignored. NOTE: KEYTLaw will prepare and send a cease and desist letter for a fixed fee of $495 per domain name registrant. If you would like KEYTLaw to send a cease and desist for you, go to Fixed Fee Domain Name Cease & Desist Letter, download the Cease & Desist Questionnaire, complete the form and mail it or send it by overnight carrier to KEYTLaw with your check for $495/registrant plus $20 for mailing costs.
- File an ICANN Arbitration Action to Obtain the Infringing Domain Names. All registrants/owners of domain names are subject to an arbitration procedure known as ICANN’s Uniform Domain Name Dispute Resolution Policy (the “UDRP”). This policy is a fantastic weapon for trademark owners that can be used to actually obtain “ownership” of infringing domain names relatively quickly and cheaply.
A UDRP arbitration consists of the following steps: (i) trademark owner files a complaint and pays an arbitration fee (approximately $1,200 for the first domain name at issue), usually requesting that the domain name be transferred to it, (ii) registrar (a company like GoDaddy) notifies the alleged infringer of the complaint and locks the domain, (iii) domain name owner has 20 days to file an answer, (iv) trademark owner has an option to file a reply to the answer within five days of the date the answer is received, (v) the arbitrator must rule within 14 days, and (vi) if the trademark owner wins, the domain name will be transferred to the trademark owner within 10 days of the decision unless the domain name owner files a lawsuit within the 10 day period in the appropriate court seeking to prevent the transfer.
A UDRP arbitration can be filed, won and the infringing domain name(s) transferred within 50 – 60 days, start to finish. Because the only documents a mark owner files in a UDRP action are a complaint and an optional reply and there is no discovery, briefing, trial or appearance before the arbitrator, the mark owner’s legal fees are much more predictable and usually substantially less than an infringement lawsuit. Much of the time and expense involved in a UDRP proceeding is actually in the due diligence performed by the attorney before filing the complaint. For a detailed explanation of the UDRP, see FAQ: ICANN’s Uniform Dispute Resolution Policy.
KEYTLaw represents trademark owners in UDRP actions on a fixed-fee basis with fees set by the number of infringing domain names per registrant. KEYTLaw may represent clients from all jurisdictions and even from outside the United States with respect to UDRP arbitrations. For more information about fixed-fee legal representation in UDRP actions, see KEYTLaw’s UDRP Legal Representation page.
- File a Lawsuit in Federal Court Alleging Violations of the Anticybersquatting Consumer Protection Act (the ACPA) or Other Laws. The ACPA is a relatively recent addition to the Lanham Act. It gives trademark owners another powerful weapon to use to obtain infringing domain names. The downside to filing a lawsuit are that the mark owner will incur substantially more legal fees and time litigating the matter than would be required in a UDRP arbitration. Because the only remedies in a UDRP action are an award from the arbitrator instructing the registrar of the domain name to cancel, transfer or otherwise make changes to domain name registration, a mark owner who seeks other remedies such as money damages or an injunction against ongoing infringement must file a lawsuit under the ACPA, the Lanham Act and/or other applicable laws. For a detailed explanation of the ACPA, see Anticybersquatting Consumer Protection Act FAQ. An ACPA lawsuit can be very effective. The mark owner is entitled to actual damages or alternatively, the court can award statutory damages of up to $100,000 for each infringing domain name. In one ACPA lawsuit, the notorious typosquatter John Zuccarini was ordered to pay statutory damages of $500,000 for five infringing domain names plus the mark owner’s attorneys’ fees and costs of more than $60,000. See Cybersquatter Liable for $500,000 under the Anticybersquatting Consumer Protection Act.
In conclusion, trademark and service mark owners should use the resources of the internet to monitor their marks periodically for possible infringing domain names. If an infringing domain name is found, the mark owner should take appropriate action to protect the mark and prevent future infringement. ICANN’s Uniform Domain Name Dispute Resolution Policy and the Anticybersquatting Consumer Protection Act give trademark owners powerful tools to stop infringing domain names and obtain “ownership” of the domain names. Trademark owners who fail to properly police infringement of their marks risk finding out too late that they have lost their rights in the mark. If you discover someone has a domain name which is similar or identical to a trademark you use of have registered, contact trademark and domain name law attorney Thomas W. Galvani at 602-281-6481 or firstname.lastname@example.org.