Law Office of
Chris Stewart, P.C.

301 S. Polk, Suite 700
Amarillo, Texas. 79101

direct: 806.322.1251
fax: 806.322.1252
email us

Attorney Chris Stewart

In our domain name law practice, we do the following:

  • Register domain names;
  • Negotiate domain name purchases and sales;
  • Litigate domain name disputes

Domain names and addresses on the Internet are registered on a first-come, first-serve basis. The domain name registration services do not inquire into the motivation of the person or entity electing to register the domain name. As a result, some individuals with unsavory motives, known as cybersquatters, can register domain names.

Cybersquatters can be lumped into two groups. The first group consists of individuals, or sometimes even businesses, who register domain names that contain the names or trademarks of pre-existing companies, organizations or associations. Internet users who type in the domain name and expect to go to the website of the company, organization or association are instead led to the website of someone else or another entity.

The second group of cybersquatters registers minor variations of recognized company names or trademarks. Oftentimes, they intend to divert Internet traffic away from the recognized owner of the name without the user knowing what has happened. For example, a computer company might register a common misspelling of Microsoft, such as "Mircosoft" in the hope of attracting users who were looking for the Microsoft website. Another company might take a common trademark and add an "s" in order to divert customers.

The Anti-Cybersquatting Consumer Protection Act, or ACPA, was adopted to address the problems caused by cybersquatters.  Under ACPA, a person or entity can bring suit in federal court against anyone who in bad faith registers or uses a domain name that is identical or confusingly similar to a distinctive trademark.

ACPA gives the court broad powers to deal with cybersquatters. The court has the power to cancel the domain name registration. The court could also transfer the domain name to the injured party. The injured party may be able to recover statutory damages ranging from $1,000 to $100,000 per domain name.

Because litigation can be expensive and time-consuming, many trademark owners take advantage of an alternative procedure for resolving domain name disputes, which is more streamlined. The Internet Corporation for Assigned Names and Numbers (ICANN) is the policy-making body that oversees domain name registries. In 1999, ICANN adopted a Uniform Domain Name Dispute Resolution Policy (UDRP). All parties that register domain names must consent to UDRP. When a registrant registers a domain name, the registrant warrants that the domain name does not infringe upon or violate the rights of any third party and that the domain name was not registered for an unlawful purpose.

Under UDRP, all registrants agree to submit to an administrative proceeding to determine the status of the domain name if a complaint is filed. The complaining party must prove all of the following:

  • the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • the holder of the domain name has no right or legitimate interest in the domain name; and
  • the holder of the domain name is using the name in bad faith.

There are no hard and fast rules for determining bad faith. Bad faith is likely to be found if the domain name was registered for the sole purpose of selling the domain name to the trademark owner or to prevent the trademark owner from using its trademark in its own domain name. Proof of bad faith can also be demonstrated where the domain name is registered primarily to disrupt a competitor's business or to unfairly divert Internet users from the trademark owner's website.

The holder of the domain name can retain the name by showing rights or a legitimate interest in the name. If the holder was commonly known by the domain name before the dispute, or the holder uses the name for a noncommercial purpose, the holder may prevail.

UDRP provides an exclusive remedy, which is to transfer the domain name to the complainant or to cancel the domain name registration. UDRP is designed to be a cost-effective and efficient alternative to litigation. Disputes are typically resolved within 45 days after filing the complaint. If the trademark owner seeks a limited remedy in a short amount of time, UDRP can be an effective tool to combat troublesome domain name registrations.

Reported Cases:

Publications:

  • Intellectual Property and Internet Law for Businesses, Process Equipment Manufacturers’ Association Annual Meeting, Tucson, Arizona, February 28-March 4, 2007

Blogs:

  • The domain land rush is still on!, March 14, 2008
  • Web Domain Names: The 21st Century Land Grab, February 28, 2008

Speeches:

  • Domain Names:  The 21st Century Land Grab
  • Texas Panhandle Paralegal Association
    Amarillo, Texas, August 21, 2008
  • The Law of Internet Marketing
    Amarillo Advertising Federation
    Amarillo, Texas, March 12, 2008
  • Intellectual Property and Internet Law for Businesses
  • Process Equipment Manufacturers’ Association Annual Meeting
    Tucson, Arizona, February 28-March 4, 2007

© 2008 Law Office of Chris Stewart, P.C.  All rights reserved.