Cybersquatting. Scam or reality?
How to Fight Cybersquatting
Cybersquatting takes place when one party registers, sells, or uses a domain name (i.e., an internet address) containing trademarked material for the purpose of profiting off the trademark. In most instances this occurs when people buy up popular website domain names containing trademarked names (e.g., Apple, Dell, Nike, etc.) with the hope of holding them hostage until the trademark owner pays to buy the name off the individual. You can usually tell if you are the victim of cybersquatting if, when you visit the website, you see that it is "under construction", if you "cannot find the server", or if the content of the website has no relationship to the domain name (e.g., if the website Kleenex.com deals with basketballs and not tissues). If you are the victim of cybersquatting, there are two main avenues for fighting back.
Filing a Complaint Under the Uniform Domain-Name Dispute-Resolution Policy (UDRP)
Draft a complaint.The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for coordinating domain names. Any deal done between a registrar (i.e., the entity that provides domain name registration services to the public) and a domain name holder includes an agreement to follow UDRP. Under UDRP, whenever there is a dispute between you (the trademark holder) and the domain name holder, certain procedures must be followed.The first thing you must do is draft a complaint that complies with the UDRP Rules. Under these rules, your complaint must contain the following information:
- The name and contact information of the respondent (i.e., the domain name holder)
- The domain name that is at issue.
- The registrar with whom the domain name is registered.
- The trademark the complaint is based on.
- A description of how you meet UDRP's three elements for a valid cybersquatting claim, which are (1) that the domain name registered by the respondent is identical or confusingly similar to your trademark, (2) that the respondent has no rights or legitimate interests in the domain name, and (3) that the domain name has been registered and is being used in bad faith.
Submit the complaint to an approved provider.To start the official dispute resolution process, your complaint must be filed with a provider approved by ICANN. You can find ICANN's complete list of approved providers on their website. Choose a provider and submit your complaint to them.
- When you submit the complaint you will be required to pay a fixed filing fee. The filing fee will vary depending on the provider you choose and the manner in which you choose the complaint to be heard (i.e., by a single-member panel vs. a three-member panel).
Await a response.When the provider receives your complaint, they will submit a verification request to the registrar. This request will require the registrar to lock the domain name, which prevents the respondent from making any changes to domain name information. The registrar will confirm the lock with the provider, at which point the provider will notify the respondent of the complaint.
- The respondent will have 20 days to respond to the complaint. The response will respond to every allegation you made in your complaint and will include every reason why the respondent thinks they should retain rights to the domain name.
Appoint a panel.You and the respondent will each have an opportunity to voice whether you want your dispute to be heard by a single-member panel or a three-member panel. If both parties choose a single-member panel, the provider will appoint a single panelist from their list. If you or the respondent choose to have a three-member panel decide the dispute, you will each have an opportunity to submit the names of three possible candidates. The provider will then choose the final panel but will try to include at least one panelist from each party's list.
Submit evidence.Once the panel has been chosen, the provider will forward your complaint and the respondent's response to the panel. Other evidence can be submitted to the panel only if the panel requests it. There will not be any in-person hearings unless the panel decides that one is necessary.
Await the decision.Once the panel has reviewed all of the evidence, it will draft its decision, in writing, within 14 days of being appointed. The decision will explain the reasons for the panel's decision, when it was rendered, and who each panelist was. The panel will send its decision to the provider. The provider will forward the entire decision to you and the respondent within three days of receiving it.
- The provider will also forward the decision to the applicable registrar and ICANN. After receiving the decision, the domain name registrar will have to implement the decision.
Preparing a Lawsuit Under the Anticybersquatting Consumer Protection Act (ACPA)
Hire a lawyer.ACPA is a federal law that allows you (the trademark owner) to sue a cybersquatter in federal court to obtain an order requiring the cybersquatter to transfer the domain name to you. In some instances, the cybersquatter may even have to pay damages.Because you will be filing a lawsuit in federal court, you should always hire a qualified lawyer to help you through the process. To hire a lawyer, contact your state bar association's lawyer referral service. After answering a few questions about your legal dispute you will be put in touch with a number of qualified lawyers in your area.
- Once you have the names of a few qualified candidates, call them and ask for an initial consultation. During these meetings you will be able to ask the candidates questions about your case and about their legal practices. Make sure the lawyer has a good grasp of your case and feels comfortable with the subject matter (i.e., internet law, cybersquatting, and intellectual property law). Do not forget to ask how the lawyer charges for his or her services.
- After you conduct each initial consultation, hire the lawyer you feel most comfortable with.
Analyze ACPA.Once you hire a lawyer, sit down with him or her to discuss your lawsuit. In order to bring a successful case under ACPA, you will have to prove in court that (1) the domain name holder had a bad faith intent to profit from your trademark, (2) your trademark was distinctive when the domain name was registered, (3) the domain name is identical or confusingly similar to your trademark, and (4) your trademark qualifies for federal protection.
- If you successfully sue under ACPA, your remedy will usually be restricted to the transfer of the domain name to you.
Determine whom (or what) you will sue.If you think you can meet every element set forth under ACPA, you will have to figure out who to sue. Ideally you will find the domain name holder and sue them where a court can find that in personam jurisdiction exists (i.e., jurisdiction over the person). However, ACPA has contemplated the fact you may not be able to find the domain name holder and assert normal in personam jurisdiction. If you find yourself unable to track down the domain name holder, ACPA allows you to file an in rem (jurisdiction over the property) civil action against the domain name.
- Under ACPA, you can bring an in rem civil action if the domain name holder or registrar is not subject to a court's jurisdiction, or you cannot find the domain name holder or registrar.
Filing Your Lawsuit
Decide where to file your lawsuit.Your ACPA lawsuit must be filed in federal court in a district that has jurisdiction over the defendant or the property in question. If you are asserting in personam jurisdiction against the domain name holder or registrar, you can file your case in the federal district where the defendant resides, maintains connections, or is served.If you are asserting in rem jurisdiction, you must file your case in the district where the domain name holder or registrar is located, or where you can establish control over the registration and use of the domain name.
Draft your complaint.The complaint is a formal legal document that starts a lawsuit. It tells the court, as well as the defendant, what you are suing for and how you want the case resolved. Your complaint will need to include at least the following information:
- The case caption, which identifies the parties to the case and the court you are suing in.
- Whether you want a jury trial.
- A description of jurisdiction (i.e., whether the court has in personam or in rem jurisdiction and why that is).
- The cause of action, which will explain that you are suing for cybersquatting under ACPA.
- The remedy you want, which in this case will be a forfeiture of the domain name by the domain name holder and a transfer of ownership to you.
Fill out your summons.A summons is a form that tells the defendant he or she is being sued and demands a response from them. This form is usually already filled out and all you have to do is fill in the defendant's name as well as the number of days the defendant has to respond. The time limit applying to your case can be found in the Federal Rules of Civil Procedure, which you can download online from your court's website.
- While different types of cases will have different response times, they are usually around 30 days.
File your lawsuit.Take your complaint and summons, as well as multiple copies of each, to the federal courthouse and file them with the clerk of courts. The clerk will check your documents and, if they are satisfactory, will ask you to pay the 0 filing fee. If you cannot afford the filing fee, you can submit a motion to proceed in forma pauperis, which asks the court to waive the fee.
- If you pay the fee, your lawsuit will be stamped as "filed" and you will be given an official summons.
- If you filed for a fee waiver, your lawsuit will not be stamped as "filed" until your motion is granted.
Serve the defendant.Once your lawsuit has been filed, you will take a copy of the complaint, as well as the official summons, and give them to the defendant. Serving a copy of your lawsuit on the defendant gives him or her notice that they are being sued and allows them to respond. To serve the defendant, hire someone to give copies to the defendant in person or in the mail.
- Once service is complete, the server will fill out a Return of Service form that you will file with the court.
Await the defendant’s answer.Once the defendant is served, he or she will have to respond within the time period set forth in the summons. The defendant will usually respond by filing an answer and serving it on you. The answer will respond to each of your allegations by admitting or denying them. In addition, the defendant may file cross-complaints or other motions to try and get the case dismissed.
- Read the answer carefully as it will give you an idea of how the defendant is going to fight the case.
- If the defendant fails to respond to your lawsuit, the court may enter a default judgment in your favor, which means you will get the relief you requested in your complaint.
Taking Part in Pretrial Actions
Conduct discovery.Discovery gives you and the defendant an opportunity to exchange information in order to get ready for trial. You will want information about who witnesses are, what relevant documents are out there, and what the defendant will say. To get the information you want, you will be able to use the following tools:
- Depositions, which are in-person interviews with witnesses and parties. The interviews are conducted under oath and answers can be used in court.
- Interrogatories, which are written questions posed to witnesses and parties. The questions are answered under oath and can be used in court.
- Document requests, which are formal requests asking the defendant to hand over relevant documents.
- Requests for admissions, which ask the defendant to admit or deny the truth of certain facts. This helps minimize the issues that need to be handled at trial.
Defend against a motion for summary judgment.As soon as discovery concludes, the defendant will probably file a motion for summary judgment. To be successful, the defendant will need to persuade the court that there are no genuine issues of material fact and that they are entitled to judgment as a matter of law. In other words, the defendant is arguing that even if the court made every factual assumption in your favor, you would still lose.
- You can defend against this motion by filing your own evidence and affidavits that persuade the court that factual disputes exist and that they should be handled during trial.
Attempt to settle.If you make it past the summary judgment phase of litigation, you might want to consider settling your case. Going to trial can be expensive and time-consuming, often times costing your more than your case is ever worth. Therefore, even if you win at trial, you might end up losing money. To attempt a settlement, sit down with the defendant and discuss what you want out of your ACPA case (i.e., transfer the domain name to you). To foster a settlement, you may even tell the defendant you will pay a small fee for the domain name. If you cannot come to an agreement, you might try the following:
- Mediation, which involves asking a neutral third party to get involved and help the settlement process The mediator will help find common ground but will never take sides or voice opinions.
- Arbitration, which involves asking a judge-like third party to hear evidence and draft an opinion. The arbitrator will hear evidence presented by both parties and will then draft an opinion.
Attend the final pretrial hearing.If you cannot settle your case out of court, you will have to attend a final pretrial hearing in order to discuss the issues that need to be heard at trial. The judge will put together a trial road map and schedule in response to this meeting. Be sure you bring up every possible issue during this meeting. If you forget to raise an issue, it may not be scheduled and you will not be able to raise it at trial.
Going to Trial
Choose a jury.If you invoked your right to a jury trial in your complaint, you will choose your jury during a process called "voire dire." During voire dire you will be able to ask questions of potential jurors in order to assess their ability to impartially hear and decide your case. If you do not think a possible juror can be impartial, you can ask the court to remove that juror. Once you have chosen your jury, they will be empaneled and your trial will begin.
- If you waived your right to a jury trial, your case will be heard by the judge.
Make an opening statement.Every trial starts with you, the plaintiff, making an opening statement. Your opening statement should be a short synopsis of the case and should conclude with you forcefully assuring the court that you will win. Do not introduce any evidence and do not make things confusing during your opening statement. Be brief and to the point.
- The defendant will have an opportunity to make an opening statement after you. In some circumstances, the defendant may be able to wait until they present their case to make their statement.
Present your case.As the plaintiff, you will present your case first. Your case will consist of calling witnesses to the stand and introducing testimony and physical evidence through them. Evidence will only be admitted if it complies with the Federal Rules of Civil Procedure, which can usually be found on the court's website.
- When you are finished asking questions, the defendant will have an opportunity to cross-examine your witnesses. Prepare your witnesses for cross-examination by thinking of possible questions the defense might ask and coach your witnesses about those questions.
Cross-examine witnesses.When you rest and finish presenting your case, the defendant will have an opportunity to present their case. After the defendant questions each witness, you will have an opportunity to cross-examine them. During cross-examination you will try to discredit the witness by making them look biased and/or untruthful.
- For example, if you deposed a witness who said she knew your trademark existed, but that same witness said she had no idea the trademark existed during trial, you will bring this up.
Give your closing argument.When the defendant has rested, you will give a closing argument to end the trial. Your closing argument should be a recap of the case and all of the important evidence that falls in your favor. Reiterate that you have met the burdens of the law and that you should win. Remember, this is your last chance to talk with the court so you want to make it good.
- When you are done giving your closing argument, the defendant will have a chance to make one as well.
Await the verdict.After the trial is completed, the fact-finder (i.e., the judge or jury) will take a moment to deliberate and consider the evidence they heard. When the fact-finder comes to a conclusion, they will announce their verdict in court.If you win, the domain name will be transferred to you. If you lose, the domain name will still in the defendant's possession.
Video: Module 9 : IP in Digital Economy : Cyber Squatting
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