Domain names, including a company's trademarks, represent a brand's presence online. Worldwide, there are currently over one billion people on the Internet searching for information. You want them to find you – not your cybersquatting counterpart.

The United States Patent & Trademark Office (USPTO) has more than 3,000,000 registered trademark and service marks. If you own a federally registered trademark or a service mark, there is a chance that someone has “squatted” on your brand by purchasing domain names that are very similar to your website's URL.

What is cybersquatting?
Cybersquatting is the registration of domain names that use, or are very similar, to another's trademark. The registration of domain names is a first-come and first-served filing system with a relatively low filing fee and few regulations. Some people rush to register the domain names for known trademarks and sell them back at exorbitant prices to the trademark owners. Others secure the domain names for the trademarks of the competition and link these domain names to their own website. These individuals are generally known as cybersquatters, or those that act in bad faith and misappropriate the domain names for known trademarks.

Big brands are not the only ones exploited by domain name squatters. In fact, it's fairly easy to find examples of domain squatters posing as legitimate websites for political candidates, government agencies, and even memorials to victims of tragedies.

The Coalition Against Domain Name Abuse (CADNA) states that internet users are often unwittingly sent to cybersquatted sites. It also maintains that “the domain registrants and technical services providers of these bad-faith sites profit, while the legitimately trademarked sites lose business or funds.”

The CADNA provides the following examples of a few of the political and government names that are potentially cybersquatted:

Political Candidates:
arackobama.com
mikehuckabee2008.com
brownback2008.com

Government sites:
uspto.com
pentagon.com
healthandhumanservices.com
deptofhomelandsecurity.com

Easier for squatters; costly for your brand
Cybersquatters are now automating processes to register domain names and to display content. More and more squatters continue to profit from the brand awareness of others' trademarks.

According to research conducted by CADNA, in conjunction with the domain and market research consulting firm FairWinds Partners, the economic impact of cybersquatting is significant. Their research states that “the practice of cybersquatting costs brand owners worldwide over $1 billion U.S. dollars every year as a result of diverted traffic, the loss of hard-earned trust and goodwill, and the increasing enforcement expense of protecting consumers from Internet-based fraud. These figures include the estimated increase in search engine keyword click fees due to PPC sites and the enforcement costs associated with addressing just 5% of the domains secured by cybersquatters.”

Protecting your brand online
The Anticybersquatting Consumer Protection Act (also known as Truth in Domain Names Act), a United States federal law enacted in 1999, is part of a Bill to amend the provisions of title 17, United States Code, and the Communications Act of 1934, relating to copyright licensing and carriage of broadcast signals by satellite. It makes people who register domain names that are either trademarks or individual's names with the sole intent of selling the rights of the domain name to the trademark holder or individual for a profit liable to civil action.

There is also a governing body of the internet, which is advised by the U.S. Department of Commerce. It's called the Internet Corporation for Assigned Names and Numbers (ICANN) and it has day-to-day responsibility for establishing policies and managing the operations of the internet's domain name system (DNS).

However, ICANN isn't actively searching for domain name infringers. That task is up to the brand – or rather, you. So, what are the key steps that companies can take to protect their domain names and trademarks from infringement?

First you have to find the infringers. It is fairly easy to find domain names that may infringe on your mark. To do this, go to a website that provides a database of registered domain names and perform a search. One such site is www.whois.com.

Once you have conducted a search, what happens if you find a site that is using your brand to drive traffic to its services? You have options – but, again, it is up to you to follow through.

Here are a few:

• Cease and desist letters. You can send the infringer a letter known as a "cease and desist" letter – or hire an attorney to do this for you. This letter states that you have a trademark that they are infringing on and causing you damage. And, that they must immediately cease using the mark and transfer the domain name to you.
  
  Note: Many of the articles and websites we researched said that the letters from the attorneys tend to be more effective. Those, of course, cost money. But, we have seen this process work. In fact, just today we received an e-mail notice from a contact that had changed their domain name because they had received a cease and desist letter.
  
  
• File an ICANN arbitration. Trademark owners can use ICANN's Uniform Domain Name Dispute Resolution Policy (the "UDRP") to obtain "ownership" of infringing domain names.
  
  
• File a lawsuit in federal court. You can pursue legal action at the federal level based on the Anti-Cybersquatting Consumer Protection Act.
  
  

In summary, if you're interesting in protecting your brand and marks online, the onus is on you to monitor the internet, find these squatters, follow through with appropriate corrective or legal actions, and then demonstrate that the squatter has a "bad-faith intent" to profit.

Find out more
For additional information on the legal industry and protecting your brand online, visit this issue's Useful Links or return to the Global Communicator.

Sources:
Anticybersquatting Consumer Protection Act
Coalition Against Domain Name Abuse (CADNA)
World Intellectual Property Organization (WIPO)