Domain names are the source of two kinds of disputes: (1) the dated (if legally-correct) term “cybersquatting” and (2) ownership, especially security interests.
Cybersquatting isn’t simply using a “your” domain name, or a domain name to which you ought to be entitled. It’s a species of trademark law, which means the offending domain name must infringe on one of your trademarks, with all that implies. You can sue both under trademark laws and the special purpose “Anti-cybersquatting Consumer Protection Act,” which can use to enjoin (i.e., stop) the offending use, transfer the domain name to your ownership, and collect whatever damages you can prove, overseen by a real U.S. judge. Of course, lawsuits have their discontents.
If all you want is the domain name, you can opt for a “Uniform Domain-Name Dispute-Resolution Policy” proceeding (“UDRP”), which is an international arbitration. It’s much less expensive than a lawsuit, though the arbitration panels can be fickle. This procedure has been around for a while, so it is well understood. If all you want is to stop the cybersquatting, you might consider the new “Uniform Rapid Suspension” (“URS”), once it comes online. The hope is that URS procedures will be very cheap and very fast, but they also will be limited to only the most clear-cut cases of infringement.
Except for a lawsuit for trademark infringement, all forms of cybersquatting relief have an important limitation: bad faith on the part of the putative cybersquatter, which is not always easy to prove. Further, the UDRP and URS procedures also require that your trademark be registered, which might be itself a good reason to register your trademarks.
If the dispute involves ownership of the domain name, be aware that you might have two layers of ownership to deal with: ownership of the trademark and ownership of the domain-name registration. Courts are still not quite sure how to treat domain-name registrations: as a new form of intellectual property or a contract right. For more, see our primer on IP-ownership issues.
A common flavor of this sort of dispute is where a party has a security interest in a bunch of domain names. The point of security interests is to make the transfer of collateral seamless (i.e., keep the courts out of it) when the debtor defaults on the secured debt, but the presence of certain third party—the registrar—complicates this procedure.
Aaron | Sanders PLLC can help uncomplicate this ever-changing landscape. Contact us to see how we can help you settle this more-and-more common dispute.