Cybersquatting and Intellectual Property Protection
Are you the owner of a well-known trademark? Has someone ever contacted you asking to sell you a domain name which is very similar to your own domain or trademark? If yes, you may have been the victim of cybersquatting.
What is cybersquatting? It is the practice of registering domain names using a small variation on a trademark’s name, in order to mislead the users and direct traffic away from the legitimate pages. Sometimes the misleading domain is registered simply to be resold to the trademark owner, sometimes it is linked to a page that sells counterfeited items or contains pay-per-click ads in order to monetize the traffic. According to the World Intellectual Property Organization (WIPO), cybersquatting cases have been rising exponentially and hit a new record in 2016.
Types of Cybersquatting
Cybersquatting can consist of “typosquatting” or “URL hijacking”, where the misleading website minimally differs from the legitimate one, for instance, a couple of letters. This type of cybersquatting exploits typos made by Internet users when typing a name in the browser: entering an incorrect website address may lead them to the website owned by the cybersquatter. For instance, in 2003, in one of the first cybersquatting cases decided by a Brazilian court, an individual was condemned to pay $350.000 in damages to the company Bradesco and to Banco BCN for registering the domain names “wwwbradesco.com.br” and “wwwbcn.com.br”, which differ only one dot from the legitimate “www.bradesco.com.br” and “www.bcn.com.br”.
Another popular cybersquatting technique is buying a second level domain name (ccSLD), like org.br or inf.br, while the legitimate owner only registered a top- level domain (ccTLD), like .br. In the case Carl Zeiss vs. Quality Technologies ComércioImportação e Exportação Ltda. a Brazilian court ruled against the company Quality Technologies, which registered the domain name “www.zeiss.com.br”, stating that the trademark Zeiss was owned by Carl Zeiss do Brasil Ltda. It is interesting to note that in Brazil there is the possibility to register as many as 66 different second level domain names, hence it is a real heaven for cybersquatters!
What to do in case of Cybersquatting
Should you become aware of cybersquatting activities that damage your brand, the first step is referring to WIPO, appealing to a Uniform Domain Name Dispute Resolution.
In order to proceed, the complainant needs to prove that the domain name is identical or confusingly similar to a trademark he owns; that the registrant does not have any rights or legitimate interests in the domain and he is acting in bad faith. When it comes to the requirement of bad faith, the WIPO will assess several factors: whether the domain name was primarily registered in order to be resold to the legitimate trademark owner, or with the primary purpose of disrupting the business of a competitor; or if the registrant is using the domain to attract users to his website, by creating a likelihood of confusion with the complainant’s mark. The UDRP is generally quicker and relatively less expensive than a traditional legal suit and it can be the best option, especially if the parties do not belong to the same jurisdiction.
A procedure in front of the WIPO does not exclude the possibility, in the case of an unsatisfying outcome, to refer to a national court dealing with trademark infringement cases.
It is also possible, although not advisable, to bring the case in front of a national court in the first place. In Brazil like in Argentina, the competence for cybersquatting cases belongs to civil courts. The procedure in this case is longer than in front of the WIPO, although the claimant can request a preliminary injunction to prevent the registrant from profiting from the domain name before a final decision is reached. Similarly to a UDR procedure, the claimant will need to prove the bad faith of the registrant.