You wake up one morning to discover that your business’s trademark that you spent countless hours and dollars nurturing and protecting is now incorporated in a domain name owned by someone else. This person is using it to compete against you, demean your business, or is willing to “sell it to you for a price” — what to do? Every day the offensive domain continues to be available to the public increases the likelihood of greater harm to your business.
The Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), in part, prohibits someone from utilizing another’s trademark in a domain name in a confusing fashion or to hold a domain name hostage for resale to the trademark holder. The ACPA provides a remedy in federal court for the owner of a mark to sue for cancellation or transfer of the offending domain name and for damages. But litigation under the ACPA can be time consuming and expensive. A quicker and less expensive alternative can be to proceed under the Uniform Domain Name Dispute Resolution Policy developed by The Internet Corporation for Assigned Names and Numbers (“ICANN”), the private sector, non-profit corporation created in 1998 to assume responsibility for domain system management and related issues.
ICANN’S Resolution Policy is administrative in nature, normally taking just a few months, with a successful complainant being able to have the offending domain name cancelled or transferred to itself, unless the losing respondent institutes an action in federal court against the complainant within 10 days of the administrative ruling. There is no right to attorney fees or damages under the ICANN policy, but damages could still be pursued in a subsequent federal action, if appropriate, with also the potential to recover attorney fees.
For many businesses, its trademarks are some of their most valuable assets. Without vigilant protection a trademark’s value can be diluted or destroyed. The ICANN Resolution Policy in many instances can afford the trademark owner a quick and inexpensive method to eliminate cybersquatters.
– Stephen J. Wein