Basics of Domain Name Recovery and Domain Name Litigation
As the Internet expands, the number of domain names being used is skyrocketing. There are more than 202 million Internet domain names registered - a number that vastly exceeds the roughly 172,000 words in the Oxford English Dictionary. The buying and selling of domain names has become a multi-million dollar business. With that expansion comes an ever-increasing risk of intellectual property (IP) violations. As a result of the sheer volume of domain names, there is a probability that one or more cybersquatters has obtained a domain name that is identical to or confusingly similar to a company's trademarks. The biggest reason for trademark infringement is that the public, and the domain name registrants, are unaware of the trademark laws and the legal consequences of trademark infringement.
Domain name recovery is now an important part of any business' protection of its trademark rights and good will. There are several options to address a domain name that violates a company's intellectual property rights. First, a business could send a cease and desist letter, requesting that the infringer immediately stop using the domain name. The letter could be sent from the company itself or its outside counsel and can be soft, i.e. non-threatening, or more stringent. Drafting a letter is a fairly inexpensive first step and is typically an effective way to deal with smaller infringers. And it may lead to negotiations with the infringer for the domain name, which avoids any additional expense.
Second, a company could file an ICANN arbitration - through the Uniform Domain Name Dispute Resolution Policy (UDRP) - to obtain the infringing domain name. A UDRP arbitration is less expensive than civil litigation because the documents are limited and there is no discovery, very little briefing, and no appearance before an arbitrator. Decisions can be rendered within two to three months of the ICANN filing.
Third, and likely the most expensive option, is to file a lawsuit, most typically in federal court under the Anticybersquatting Consumer Protection Act (ACPA) or the Lanham Act. Litigation is often an effective way to handle infringers, with a potential upside of actual or statutory damages in the hundreds of thousands of dollars. Additionally, the company may be entitled to recover attorneys' fees and costs. Litigation, however, can require significant time from numerous employees, and its outcome is not guaranteed.
Which option is best is often determined on a case-by-case basis and is often business-specific. Regardless of the approach, it is important that the business act quickly to protect its valuable intellectual property. Domain name recovery can be an important business concern in this respect. Read for more for additional information regarding domain name recovery and domain name litigation.
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Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.
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