Domain Names & Cybersquatting
Domain names for web sites may be registered with various private companies. Obtaining a domain name registration, however, does not mean that the domain name does not infringe on another party’s trademark or service mark rights. If a domain name is identical or confusingly similar to another party’s trademark or service mark, the owner of the domain name may be forced to cease using it. “Cybersquatting” (registering a domain name that infringes on another party’s trademark or service mark) is also prohibited by a Federal law specifically targeting that practice. The Anticybersquatting Consumer Protection Act (the “ACPA”), amended the Lanham Act to prohibit someone from registering, trafficking in or using a domain name that is identical of confusingly similar to another party’s trademark or service mark. To succeed in a cybersquatting claim under the ACPA, a plaintiff must establish that the defendant had a “bad faith intent to profit” from the use of the infringing domain name. A normal claim for trademark infringement under the Lanham Act, however, does not require a plaintiff to prove “bad faith” by the infringing party. In addition to a possible court action for trademark infringement, the Internet Corporation for Assigned Names and Numbers (“ICANN”) provides a Uniform Domain-Name Dispute Resolution Policy to resolve alleged trademark infringement by a domain name. An attorney should be consulted to determine whether a particular case would be better suited for a court trial or for arbitration through the ICANN dispute resolution policy. Contact Orange County business attorney Matt Sumrow for further information.