I received a call from a frantic client the other day. He was being threatened with cyber squatting. Seems a company from the west coast was claiming that my client had stolen their domain name.
Well this was a serious charge under a law Congress recently passed called the Anti-cyber squatting Consumer Protection Act. My client asked how this would affect his business and did the other side have a chance to win.
Well before we get there lets look at why this law can cost a Webmaster big bucks if he violates it.
Damages Under The Act are as Follows:
In a case involving a violation of section 43(d)(1), the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $100,000 and not more than $100,000 per domain name, as the court considers just.
Also To Keep In Mind:
The anti-cyber squatting consumer protection act amends the Trademark act of 1946 by adding an additional section to deal with these cyber pirates. The new provision in the act allows a trademark holder to sue persons who with "bad faith intent" to profit from a mark, registers, traffics in, or uses a domain name that, in the case of the domain name registration, is identical or confusingly similar to the registered mark. The act defines domain name and gives a definition to the term Internet.
Again my client was only concerned on whether this other company had a chance in hell to win. I told him lets look at how the law provides guidance and defines the term bad faith in domain name registration. The law gives nine factors to be considered: If you do any of the following you may be in bad-faith (other factors not listed may apply) If you registered the name with the intent to do any of the following you may be subject to damages.
Well in talking with my client and after a review of his circumstances I found that he had the perfect right to register and keep the name.
- He had been doing business under the name since 1994
- He had used the name in his advertising and correspondence
- He did not intend to resell the name and in fact did not solicit offers
- He was in good faith in his use.
I told him that the other side could always file a lawsuit (This is America) but that he was well protected and could sleep at night.
So if you have registered a great name here are some suggestions on how to avoid any problems:
1. Check if name is trademark or other intellectual property rights of the person.
2. Do not use the legal name of another person unless is common or has common meaning.
3. Are you bona fide offering of any goods or services not in violation of the trademark.
4. The person's lawful noncommercial or fair use of the mark in a site.
5. Do not register domain name misspellings of trademarked names with the sole intent to divert consumers from the mark owner's online location, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site. [Hard one to get around on misspelling]
6. Do not offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain.
7. Do not use misleading false contact information when applying for the registration or maintenance of the domain name.
8. Do not register which you know are identical or confusingly similar to trademarks, service marks or celebrity names.
9. If you have sold names or offered to in the past without having used the domain names in the bona fide offering of any goods and services.watch out!
10. Consult and attorney. This is one area of the law that you should not go alone.