June 6, 2017

Cybersquatting and Typosquatting: What Are They and What Can a Mark Owner Do To Respond


Audio Transcript

David Howell: Thank you for joining us, my name is David Howell, I'm the Director of Brand Protection, here at the law firm Vorys, Sater, Seymour and Pease. Joining me today is Blake Finney, an associate attorney with our firm. Today we're going to be discussing cybersquatting and typosquatting, and the differences thereof. To jump right in, I want to thank you, Blake, for joining us today and taking the time to answer these five or six questions we'll be going over.

Blake Finney: Happy to be here.

David Howell: Thank you, Blake. First, to jump in, I think it would help for us to understand what Cybersquatting and Typosquatting are, and if they're the same or are there any differences between the two?

Blake Finney: Sure. I guess to start, Cybersquatting is registering a domain in bad faith, with the intent to profit from the goodwill of the trademark belonging to another. That's a long-winded way of saying, registering a website with someone else's trademark to benefit yourself.

A simple example would be, if I'm a brand owner and I own ABC Cosmetics, a cybersquatter may register, "abccosmetics.com," or, "abccosmeticssale.com," or some variation thereof. The cybersquatter in that instance would be profiting off of my brand, ABC Cosmetics, for his or her own gain.

The variation of that would be Typosquatting, where the same bad doer in this instance, would register a domain with a misspelling of my brand name, or my brand's trademark in order to kind of capture a consumer or a web user who mistakenly types in the wrong address.

And both of these behaviors, Cybersquatting and Typosquatting, can have serious consequences for a brand's bottom line. They can tarnish the brand's reputation by associating the brand with unsavory, or obscene materials if that's what is ultimately at the Cybersquatting website. It can divert Internet traffic to competitors, counterfeiters, or any other type of fraudulent scheme. And ultimately, it just kind of harms the brand's consumer confidence.

It becomes difficult for consumers to find the right website and to be confident that they're on a website that's actually associated with the brand. As long as the Internet's been around, there's pretty much been the problem with Cybersquatting, but there are a number of options to address this.

David Howell: Wow. That's a great answer. I think over the years, it's become a little easier for a lot of Cybersquatters to get out there, given the low cost of domain names, isn't that safe to say?

Blake Finney: Absolutely. With an idea in their head and 10 dollars in their pocket, any can register a domain.

David Howell: Exactly, exactly. That being said, how would a brand owner go about determining if a domain name is being used by a Cybersquatter or a bad faith individual?

Blake Finney: It's actually fairly simple. There are quite a few affordable online services that can search the web for domain names that contain a brand's trademark, or variations of the trademark. They can find things that aren't exactly on point, but maybe Typosquatting or adding some words to your brand's trademark. Once a brand can hook up with one of these companies, and we can certainly guide people in the right direction there, you can compare the list of results with the brand's own actual authorized websites, and see what's out there, and what actually needs to be addressed.

Once one of these offending domains is identified, the next step would be to run what we call it's a, "Who Is” search. This is a simple search that provides information on the individual who registered the site, including his or her contact info.

This can be incredibly useful if you run the Who Is search, and you see, "Oh, John Smith, my former business partner seems to have registered a site directly infringing on my domain, on my trademark." In that instance, it'd probably be prudent to just reach out to the registrant and say, "You know, you're misusing my mark here. You need to transfer the site to me."

Increasingly, there are some privacy services that are used to mask the true identity of the registrant, but it's always good to run a Who Is search, and see if you can find out who it is on the front end.

David Howell: That's good. That's a great diligent step. I know there was a time with a lot of these domain registrars, you'd be able to type in a trademark and it would recommend variations both in the Typo and Cybersquatting for someone to register. I think some of those things have subsided a little bit but there might still be things out there that are encouraging some of this infringement if you will.

Blake Finney: Oh, definitely. You can never doubt the ingenuity of someone who wishes to misuse your brand's name.

David Howell: Exactly. If the brand owner is looking at a domain name, and they feel that they're dealing with a cybersquatter, what can be done, or what remedies are out there.

Blake: There are really two main options for the mark owner, for the brand. The first would be to file a traditional lawsuit, under the Anti-Cybersquatting Consumer Protection Act, or ACPA. This is a federal statute codified as section 43-D of the Lanham Act. The ACPA provides a straightforward legal claim against the registrant of a cybersquatting site. This would be a traditional lawsuit filed in federal court. The alternative to that is something called the Uniform Domain Name Resolution Policy, or UDRP. The UDRP is an international arbitration procedure that is followed by website registrars. This is a bit of a faster, less formal process, and is useful for addressing websites that are registered internationally as well as domestic.

David Howell: If I'm not mistaken, we would recommend going the UDRP route, which is like you mentioned, an arbitration process. But if that does not go in your favor for some reason, is it correct to say you still would be able to file that formal lawsuit under the ACPA?

Blake Finney: Yes. The selection of one does not preclude the other.

David Howell: Perfect, good. That's great. Traditionally, the ICANN arbitration system is seen as faster and less expensive. What types of complaints would be appropriate for such an approach, or what would we need to compile in order to start either one of these processes, or more focuses on the UDRP process?

Blake Finney: Sure, well for the UDRP process, it's fairly straightforward. The brand or mark holder submits a complaint, a formal complaint, to one of several selected UDRP providers.

In this complaint, the brand owner would lay out three main elements. The first would be that the domain that we're challenging, is identical, or confusing to a mark that your brand has rights in. Second, that the registrant of the domain has no rights to the mark. And third, that the registration is made in, "bad faith." Bad faith is the real key here, and there are many ways you can demonstrate bad faith, including that the purpose of the registrant is just to resell the site, or that there's a pattern of conduct by this particular cybersquatter. For instance, he or she has registered numerous sites for the same purpose. Another bad faith indicator is that the registrant is intending to disrupt the brands business, or that is they are using the confusing domain for the registrant’s commercial gain.

Under the UDRP there's really two remedies, you can either have the website transferred to you or canceled if you are successful in the UDRP process. The registrant does get an opportunity to respond, but it's a pretty straightforward process and like we said before, it's a little bit cheaper than a lawsuit. The complaint fee is approximately $1,500 for a single arbitrator. And often, once a complaint has been submitted, everything can be done within about 60 days.

David Howell: Perfect. I think that would be a great follow-up conversation to discuss the UDRP process in a little more depth, because when we're talking about confusing with similar or bad faith, what we're really talking about is diversion. Somehow they're capturing that and diverting it. A lot of times it could be freedom of speech but more of what we see is for financial gain. That's really easy to prove a bad faith when it's a financial gain and they're out to trademark holder. Wouldn't that be safe to say?

Blake Finney: Absolutely, yeah.

David Howell: Moving on then, if we move past the UDRP, if we decide not, or our client decides not to go the UDRP route. At that point, and you decide this sue, what must a trademark owner be able to prove, or to file under that ACPA act?

Blake Finney: Sure. The ACPA, I mean like the UDRP, is not that complicated in what it asks you to demonstrate. To successfully make an ACPA claim, the mark holder should demonstrate first that the trademark owner is entitled to protection, and this can apply to common law and registered trademarks. Even if you don't have a trademark registered, you can still meet that first element. You also need to show that the domain is identical, or confusingly similar to a distinctive or famous mark, that the mark owner holds. Third, that the registrant registers, traffic's in, or uses the domain, which is pretty simple. If they're using the domain to sell their products or for some other purpose, that's pretty easily met. And fourth, that they're engaged in a bad faith attempt to profit from the mark.

In most instances, when there's a website that a client comes to us with problems, it's pretty evident that the registrant is intending to profit off of it. The ACPA provides, unlike the UDRP, the opportunity for kind of traditional legal remedies, including the issuance of an injunction, or possibly damages. If it's a situation where a client feels that there are damages to be had, or they need to get a court order to prevent someone from continuing this type of activity, the ACPA can be a great route to take.

David Howell: That's great, that's great. Great advice, great information. I appreciate it Blake and thank you for taking the time today to walk through, at least touch on kind of what Cybersquatting and Typosquatting situations are, and then the remedies that we can cure that is.

It's important to really discuss these things. When you have something like this presented to you or you find an instance of this, to consult those the legal professionals. To really find the right approach, and it's not always filing the legal claim, or filing the UDRP. There are different situations for different instances of bad faith infringement that's out there. Again, thank you, Blake, for taking the time today, and I'm looking forward to continuing the conversation.

Blake Finney: Sounds great David. Thank you very much for your time.

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