What is Cybersquatting Defined as in California?
In 2022, the World Intellectual Property Organization (WIPO) reported 2,051 domain name disputes filed in the United States alone, a more than 16 percent increase from the previous year. At the heart of many of these disputes is the intentional act of cybersquatting. If a cybersquatter is sitting on your business’s domain name or using your trademark in bad faith, it can threaten the reputation you have built and cost you valuable customer traffic. Call our office of trademark enforcement lawyers for a complimentary consultation and learn how to start protecting your business’s reputation before trademark litigation becomes necessary.
What is Cybersquatting?
The Anticybersquatting Consumer Protection Act defines cybersquatting as registering and using a domain name that is identical, confusingly similar, or dilutive of another’s registered trademark or service mark. The reason behind such actions is usually to profit in some way financially, tarnish a brand’s reputation, or divert website traffic away from the actual trademark owners. For example, someone may register your trademark as a domain name to profit from your earned reputation.
Courts in the US, including California, will consider nine factors when determining whether cybersquatting is occurring. These factors include the following.
The involved person’s (or brand’s) rights under trademark or intellectual property law in relation to the domain name in question
To what extent a domain name consists of the personal name or protected mark of another party
Any prior use of the registered domain name in connection with the offering of goods or services
Any existence of actual noncommercial or fair use of a mark in a website with the domain name
Intent to divert online consumers away from the mark’s true trademark holder online to another site (under that domain name) that could result in harm to the mark’s already earned goodwill
An attempt to transfer, sell, or assign the domain to another (actual mark owner or another third party) to gain financially, without using or intending to use the domain to offer goods or services to consumers
The provision of incorrect or misleading information during the domain name registration or an intentional failure to maintain and update contact information
Registration or acquisition of more than one domain name known to be identical or similarly confusing to marks owned by others
The extent to which the incorporated mark in the domain name is or isn’t distinctive or famous within the meaning established by law (15 U.S.C. § 1125(c)(2))
Is Cybersquatting Legal in California?
Cybersquatting is illegal in the United States under the Anticybersquatting Consumer Protection Act of 1999. As such, cybersquatting in California is not allowed, and you may need legal advice and representation should it happen to you.
The state also takes crimes online further with the California Political Cyberfraud Abatement Act, which became law in 2001. Cyberfraud, as defined by the act, involves the creation of a political website with the intent to:
Deny an individual access to a desired political site
Deny an individual the ability to register a specific domain name for a political site
Cause an individual to reasonably believe that a political site is that of a person other than the actual owner
In other words, the act disallows anyone from intentionally deceiving, defrauding, or misleading others. In addition, California Bill AB 1104 expands the act to those websites that claim to oppose or support public office candidates.
What is the Difference Between Cybersquatting, Typo Squatting, and Gripe Sites?
While cybersquatting is becoming an all-too-common phenomenon, typosquatting and gripe sites are also increasingly requiring attention. Here are the differences between the three.
Cybersquatting
Cybersquatting (or domain squatting) is the illegal practice of registering, trafficking, or using a domain name to benefit in some way from someone else’s reputation. The intent behind such actions can be to profit financially, steal website traffic, or tarnish the reputation of another.
Typosquatting
Typosquatting is the act of registering a domain that is a typo of a well-known name, usually to create a phishing scam. When searchers enter queries online, some typos are common, and some people will take advantage of this by purchasing a domain name with that typo included. The intent behind typosquatting is usually to cause harm.
Gripe Sites
Gripe sites are domains created to mock or otherwise criticize a famous person, politician, business, or institution. However, they are not necessarily illegal. For example, Jerry Falwell unsuccessfully demanded that the domain fallwell.com be taken down. Christopher Lamparello, the domain owner, used the site to criticize Falwell’s homophobic preaching. The federal court ruled that because Lamparello did not claim to be endorsed by Falwell and did not profit financially from his site, the domain name was not infringing on Falwell’s trademarks. This case shows that courts will uphold the right to freedom of speech regarding website owners.
There are many examples of cybersquatting, typosquatting, and gripe site cases today. They can involve person or company names, from Madonna to Microsoft, and be legal or illegal, depending on the surrounding circumstances. All three can have a negative impact, whether you are an individual or a company, and knowing what to do next will be imperative.
What Can I Do About Cybersquatting?
If you believe cybersquatting is occurring, you should take action sooner rather than later. You have a few options for this, including filing a complaint or initiating a lawsuit.
Arbitrate Through the Internet Corporation for Assigned Names and Numbers (ICANN)
Trademark owners can file a complaint via the Uniform Domain Name Dispute Resolution Policy (UDRP) through ICANN. Once filed, you, as the complainant, will have to undergo administrative proceedings to recover internet domain names registered in bad faith. There is no monetary compensation granted through this type of arbitration, only the cancellation, suspension, or transfer of the domain in question.
UDRP complaints can be expensive to pursue and are not always successful, particularly if your complaint fails to rise to the level of cybersquatting. To stand as a case of cybersquatting before ICANN, the complaint must typically show the following three elements:
The disputed domain name is identical or confusingly similar to a mark of which you currently own the rights.
The current domain name holder maintains no rights or legitimate interests to that domain name.
The domain name in question is currently registered and being used in bad faith.
It is this third element where most complaints tend to fall short. This is because it is difficult to prove bad-faith intent without sufficient evidence.
In many situations, it is a good idea to start by filing the complaint first. If this complaint goes unanswered by the other party, which often occurs, you will be granted an automatic win.
Sue Under ACPA
A second way to deal with cybersquatting is to sue under the Anticybersquatting Consumer Protection Act (ACPA). If you choose to go this route against a squatter, you can recover your domain and sue for damages. The process will take longer to compile the necessary evidence to prove cybersquatting. However, if successful, it can restore and protect your trademarks or service mark rights and your brand’s reputation long into the future.
Whether you are considering how to protect your domains and trademarks or need to determine the next steps when dealing with potential cybersquatting in California, seek legal advice from our San Diego trademark attorneys. We can help you determine what is right for your situation and get you back on track with managing or growing your business with confidence.
What Are the Advantages of Working With a Law Firm to File Your Complaint?
Filing a UDRP complaint begins with putting together the proper documents and evidence. Since this critical step can be complicated and incur high expenses, working with an experienced law firm can give you a higher chance of success.
One of the significant advantages of working with a lawyer with experience in trademark law is that they are already familiar with the complaint process and how to navigate its many nuances. Another benefit is that they already have the right tools to compile the evidence needed to support your case successfully. As a result, you can save time and money as you move forward.
Reclaim Your Domain
You have diligently built up your brand name and reputation, so why let cybersquatters take the upper hand and cause harm? Take the necessary steps to reclaim your domain and protect or repair your reputation with the help of the experienced attorneys at Trestle Law.
If you believe your brand is a victim of cybersquatting, we are here to help, starting with an initial, no-strings-attached call to determine if we are the right fit for you. Before this consultation, we can provide you with an array of resources, including blog posts, videos, and downloadable PDFs, to help prepare you for the discussion and the steps moving forward.
Call our law office today at 619-343-3655 to schedule your complimentary consultation. You can also submit the online contact form to schedule an appointment for whatever your trademark needs may be. We offer a variety of 30 and 60-minute consultations to help you stay at the top of your IP game. Find which one fits you best, and let’s start talking.