Startups and businesses of all sizes often struggle to obtain the right domain name for their companies. Many third parties own domain names you may want to use and they often have a legal right to do so. However, when they don’t have such a legal right, and when you have a valid trademark claim to the domain, the Anticybersquatting Consumer Protection Act (ACPA) may allow you to force them to transfer the domain to you.
Let’s take a look at the law and what it means to you and your business.
What is Cybersquatting
The ACPA can be used to resolve a lot of different types of abuses. For example, if someone registers a domain using your trademark and offers to sell the domain to you for a large sum of money, that may be a violation of the ACPA. It can also be used to prohibit someone from improperly profiting from the commercial use of your trademark. Further, you can use the ACPA to prevent someone from tarnishing your mark, for example using your trademark in a phonographic website name.
How to Win a ACPA Claim
To win such an argument, you must show certain things, some of which can be hard. Below is a summary of things to consider when deciding if you have a good claim.
1. Valid trademark rights
You must show that you have valid trademark rights. But not just any trademark rights – rather, you must have a trademark that is distinctive or famous. This can sometimes be hard to prove.
2. Where and how your mark is used
To win a ACPA claim you will have to show that the other party registered or trafficked in or otherwise used a domain name that improperly uses your trademark.
Further, you often cannot win a ACPA claim if your mark is used after the top level domain. For example, if someone used “MightyMarks” in a path (like domain.com/mightymarks) it would be hard for us to win a claim. But if they used it in the second level domain (like WeAreMightyMarks.com) we would have a good chance of winning our claim.
3. Time of registration
To prevail under an ACPA claim, you must also be able to show that the registration of the domain in question was made after your trademark became distinctive or famous. This obviously makes it hard for new companies to win under a ACPA claim.
4. Typo domains are also covered
Often times you will find misspelling and typo domains that create problems. For example, if someone created MightyMarksBl0g.com (note the zero in place of the “o”), that would be considered a typo domain. In such a circumstance, even though the domain is not identical to our domain, a court would still likely find in our favor because it would still be confusingly similar to our domain.
5. Bad faith
You must also prove that the other party acted in mad faith. This is probably the hardest element of winning an ACPA claim. Specifically, you must show that the other party acted with “a bad faith intent to profit from” your trademark.
As a result, if another party is using your trademark in a different geographic region, or for a different type of goods or services, even if the use is only minimal, you may have an uphill battle in front of you. Another example is when someone registers their name or nickname. In those situations, even if they are similar to your trademark, they may have a legitimate use and therefore it may be hard to win a claim against that person.
On the other hand, if someone registers a domain incorporating your trademark and immediately tries to sell you the domain for a high price, that is usually pretty good evidence of a bad faith intent. In these situations, you can often win a claim against that person.
What should you do?
If you find yourself with a possible ACPA claim, you should definitely speak to an attorney about your case. he or she can advise you of your rights and talk about what damages and equitable remedies are available to you (we will cover those in a future post).
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*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.