These days most businesses rely on the internet to promote and sell their goods and services. A good website and a strong online brand can be an invaluable tool for reaching new customers and growing your brand. However, businesses also need to be on guard against opportunistic ‘cybersquatters’ who might try to take advantage of this. Cyberquatting (also referred to as ‘domain squatting’) is the practice of registering a domain name which is almost identical to the domain name or trade mark used by an established business, with the aim of profiting from that. This article will explore what cybersquatting is, and what options are available to businesses if they have been the victim of cybersquatting.
What is cybersquatting
Cybersquatters will typically target domain names which are very similar to the domain name or trade mark of an established business. For example, they might register a domain name which:
- corresponds to an existing trade mark, but hasn’t been registered as a domain name yet by the trade mark owner;
- corresponds to an existing company name or business name, but hasn’t been registered as a domain name yet by the owner;
- is a common misspelling of an existing domain name;
- consists of an existing domain name or trade mark with additional descriptive words; or
- is the same as an existing domain name but has a different top-level domain (e.g. .com as opposed to .au).
NOTE: When you register a trade mark, company name or business name, that will be listed on a public register by IP Australia or the Australian Securities and Investments Commission. Cybersquatters can use this publicly available information to register a domain name corresponding to your trade mark, company or business name, if you haven’t already done so. Therefore, consider registering any relevant domain names before you register your trade mark, company name or business name.
Cybersquatters can attempt to profit from their abusive domain name registrations in a number of ways. Firstly, they can do this by selling the abusive domain name to the owner of the established domain name or trade mark for an inflated price. Secondly, they can also do this by confusing internet users who are looking for the established domain name or trade mark, and either selling their own goods and services or promoting the goods and services of other competitors for a fee. This is often done using a ‘parking page’ where links to competitors are automatically generated, and the cybersquatter receives a small fee each time a user clicks on the links.
Making a complaint under the Uniform Domain Name Dispute Resolution Policy (‘UDRP’)
The UDRP is an administrative complaints process for resolving domain name disputes which is designed to be a more streamlined, informal and inexpensive alternative to court proceedings. The UDRP is created by the Internet Corporation for Assigned Names and Numbers (which oversees all domain names and internet identifiers), and complaints must be filed with an accredited dispute resolution provider (of which there are currently six). The UDRP applies to domain names which are registered in a range of top-level domains (including most generic top-level domains such as .com and .net). The .au country-code top-level domain has a similar administrative complaints process known as the .au Dispute Resolution Policy or auDRP.
In order to be successful, a UDPP complaint must show the following three elements:
- the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
One benefit of filing a UDRP complaint is that the domain name will be ‘locked’ so that a cybersquatter cannot simply transfer it into a different name. If the complainant is successful, the domain name can then be either transferred to the complainant or cancelled.
Making a complaint under the Uniform Rapid Suspension System (‘URS’)
The URS is an even more streamlined, informal and inexpensive alternative to a UDRP complaint, and is reserved for the most clear-cut cases of infringement. The elements required for a URS complaint are similar to a UDRP complaint, although the complainant is required to have registered trade mark rights (under the UDRP the complainant’s rights can be unregistered). More importantly, the URS has an even higher standard of proof – the complainant must provide “clear and convincing evidence” to satisfy the dispute resolution provider that there is “no genuine contestable issue” that cybersquatting has taken place. If a URS complaint is successful, the domain name will be suspended for the remainder of the registration period.
Letter of demand
Cybersquatting can also infringe a business’ legal rights – for example, it can often amount to trade mark infringement, contravention of the Australian Consumer Law, or passing off. In such cases, there may be an option to formally write to the cybersquatter demanding that the abusive domain name be transferred or cancelled. If the cybersquatter refuses to do so, then court proceedings can be commenced. However, there are often practical difficulties with this enforcement approach if the identity of the cyberquatter is unknown (which is not uncommon, particularly where a ‘privacy service’ or ‘proxy service’ is used) and/or if the cybersquatter is based overseas.
Eligibility complaint
For some top-level domains (including the .au country-code top-level domain), there are strict eligibility requirements for who can and cannot register a domain name. If the cybersquattter does not meet these eligibility requirements (or has provided false details), then it may be possible to submit an eligibility complaint with the relevant domain name registrar. If the cybersquatter cannot show that they meet the eligibility criteria, then the domain name will be cancelled. It is worth noting that this is not an option in all top-level domains.
Key takeaways
Cybersquatting can cause serious commercial and reputational damage to your business. There are a number of potential enforcement strategies available, but it is important to choose the most appropriate option for your circumstances.
Actuate IP has a team of intellectual property experts who can assist with Domain Name Disputes. If you require assistance, you can contact our team on 1300 851 138 or info@actuateip.com.au and our friendly staff will make sure you are directed to the best person to assist you with your matter.
FAQs
How does cybersquatting work?
Cybersquatters will typically target domain names which are very similar to the domain name or trade mark used by an established business. They can attempt to profit from their abusive domain name registrations by selling them, or by using them to attract confused internet users.
What options are available to stop a cybersquatter?
There are a number of potential enforcement strategies you can use against a cybersquatter, including UDRP complaints, URS complaints, a letter of demand, court proceedings and/or eligibility complaints. It is important to choose the most appropriate option for your circumstances.
