In her article, Social Media and Intellectual Property Risks, Pria Chetty lists the top 5 intellectual property risks when using social media. The second risk, cybersquatting, refers to registering, selling, or using a domain name with bad faith intent to profit from someone else’s mark. Generally cybersquatters intend to profit from either the goodwill of another’s trademark or the sale of the domain to the trademark owner at an inflated price. The Anticybersquatting Consumer Protection Act (ACPA), enacted in 1999, provides for a civil cause of action for cybersquatting. Under the ACPA the plaintiff must show that the defendant acted with bad faith intent to profit, when he registered, sold, or used a domain name that was identical or sufficiently similar to the plaintiff’s trademark.

Courts consider nine factors in determining whether a defendant has bad faith intent to profit:

1. the trademark or intellectual property rights of the defendant in the domain name;
2. the extent to which the domain name consists of the defendant’s name;
3. the defendant’s prior use of the domain name in connection with the bona fide offering of goods or services;
4. the defendant’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
5. the defendant’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name, either for commercial gain or with an intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
6. the defendant’s offer to transfer or sell the domain name to the trademark owner or any third party for financial gain;
7. the defendant’s giving false contact information when applying for registration of the domain name;
8. the defendant’s registration or acquisition of multiple domain names that are identical to or confusingly similar to the trademarks of others; and
9. the extent to which the trademark incorporated in the defendant’s domain name registration is or is not distinctive.

In a cybersquatting case, courts may award monetary or injunctive relief. Under “exceptional circumstances,” courts may also award attorneys’ fees.

In People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001), Michael Doughney registered the domain name peta.org and created “People Eating Tasty Animals” website. After People for the Ethical Treatment of Animals (PETA)’s requests to voluntarily transfer the domain name were denied, they sued Doughney, alleging trademark infringement, trademark dilution and cybersquatting. PETA argued that they owned the “PETA” mark, which they registered in 1992. Doughney argued that his website was a constitutionally-protected parody of PETA. The district court rejected Doughney’s parody defense and granted PETA’s motion for summary judgment, holding that there was a likelihood of confusion because one would have to actually go to the peta.org website to determine that it was not owned, controlled or sponsored by PETA. On appeal, the circuit court affirmed the district’s court ruling.

A few years later in Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005), Reverend Jerry Falwell, a nationally known ultraconservative minister sued Christopher Lamparello after he created a website criticizing Falwell’s views under the domain name www.fallwell.com. On appeal, the court found that while Lamparello’s domain name closely resembled Falwell’s domain name www.falwell.com, “Lamparello clearly created his website intending only to provide a forum to criticize ideas, not to steal customers.” Furthermore, “no one seeking Reverend Falwell’s guidance would be misled by the domain name — www.fallwell.com — into believing Reverend Falwell authorized the content of that website.”

Victims of cybersquatting have several options before taking a cybersquatting matter to court. First victims can send a cease-and-desist letter to the cybersquatter. Second, victims can arbitrate under Internet Corporation for Assigned Names and Numbers (ICANN)’s Uniform Domain Name Resolution Policy (UDRP). ICANN is a nonprofit organization that oversees the domain name registration system and provides for expedited domain name dispute resolution proceeding. Although UDRP proceeding can be faster and cheaper than an ACPA lawsuits, some parties prefer ACPA lawsuits because they offer more remedies than the cancellation or transfer of the domain name, which are the only remedies available under UDRP proceedings. Additionally, UDRP decisions can be challenged and overturned in ACPA suits. Third, victims of cybersquatting may also submit an InterNIC Complaint Form to initiate help from ICANN’s Support Services.

Please read my earlier articles in this series detailing the intellectual property risks relating to social media, and look for Part 4 coming soon.