Criminals are everywhere. They may even want to steal your domain name. Or register a domain name that looks like yours and take advantage of the branding that’s taken you years to develop. Your reputation is built on your brand, and losing your reputation can take months, even years, to rebuild.
Cybersquatting and Typosquatting
Cybersquatting and typosquatting are two means where malicious actors seek to register domain names based around your brand. Cybersquatters seek to register domain names that are the same as your company or brands, and often seek to either sell the domain name to the trademark holder at an inflated price, or provide services and sell goods that play on your reputation. Typosquatters on the other hand will register domain names that look confusingly similar to your brand, often with typographical errors that internet users may type into a web browser. They too will often provide services and sell goods that play on your reputation.
In both cases internet users may be redirected to malicious websites that can harvest personal and even financial information offering goods for sale, even the same ones as the brand they are trying to impersonate. The goods may be counterfeit, or there may never have been the goods for sale at all. The criminals may simply steal the internet user’s information and use it many times over. One of the biggest cybersquatting cases in recent years was in 2015 when eBay successfully challenged 1,153 domain names using their brand that had been maliciously registered in the .com and .net top level domains.
So what should you do if you find a domain name is infringing on your demand. A first step can be to, if possible, obtain the registrant’s details through the WHOIS service. Contacting the registrant and advising them of the issue may be enough for them to agree to relinquish the domain name and transfer it to you. Particularly if the registrant has inadvertently infringed.
However if the registration appears malicious, stronger action is likely to be required that could start with a cease and desist letter from your lawyers. Such a letter should include details of your claim to the domain name (such as a trademark) and explain how the registrant is infringing on your rights. The letter should notify the registrant they should cease using the domain name in question and transfer it at no cost to you. And of course, that if they don’t agree explain that you will be taking legal action.
Uniform Dispute Resolution
If you find a domain name you believe is abusing your brand, there are dispute resolution procedures in place to help you get the domain name that are relatively cost-effective. They have been developed with the idea of reducing costs in recovering domain names.
Every top level domain is required to have dispute resolution procedures in place, and they may seek to handle these in-house or outsource to bodies such as the World Intellectual Property Organization (WIPO) <http://www.wipo.int/amc/en/domains/> or the National Arbitration Forum <http://www.adrforum.com/Domains>. There is also the option of court proceedings.
In 2016 WIPO, the largest of the dispute resolution providers, dealt with disputes covering 5,374 domain names, but this is out of a total of around 330 million domain names that are registered around the world. Lodging a dispute with WIPO, for example, will cost $1,500 for up to 5 domain names, $2,000 for 6 to 10 and more than 10 is decided on a case-by-case basis.
New gTLDs and Uniform Rapid Suspension System
The New gTLD program initiated by ICANN has seen over 1,200 of the new generic top level domains delegated by ICANN, well over 500 of which are for brands meaning over 600 are available for public registration. As part of the guidelines drawn up by the ICANN community a Uniform Rapid Suspension System (URS) was developed to help trademark owners that all new gTLD operators were required to abide by and is a voluntary option for other “legacy” gTLDs such as .com and .net.
The URS is a rights protection mechanism that complements the existing UDRP by offering a lower-cost, faster path to relief for rights holders experiencing the most clear-cut cases of infringement. ICANN has intended that fees should be no more than $500 to file disputes, but fees are set by the approved dispute resolution providers, of which there are 2 to date – the Asian Domain Name Dispute Resolution Centre (ADNDRC) and National Arbitration Forum. Fees for lodging with the ADNDRC start at $180 for 1 to 5 domain names and go up to $450 for 15 to 29 while 30 or more are determined on a case-by-case basis. For the NAF, URS fees start at $375 for 1 to 14 domain names.
Appeals and Further Action
In both UDRP and URS there are additional fees should there be an appeal. Under UDRP, an appeal can only take place if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case. For URS decisions, an appellant must identify the specific grounds on which the party is appealing, including why the appellant claims the Examiner’s Determination was incorrect and must be filed within 14 days with fees borne by the appellant. A URS determination doesn’t preclude a UDRP appeal and under both resolution services, does not preclude further legal action through the courts. Under US law, trademark holders also have the option of taking action under the Anti-Cybersquatting Consumer Protection Act (ACPA).
Thwarting the Squatters
So how do you deal with cybersquatters or typosquatters? One way to thwart them is to register domain names using your brand and trademarks. Yes, this is a cost. But your reputation might be worth it. Plus these domain names may be able to be used to promote your brands with their own websites or redirects. There are too many combinations of domain names and top level domains (domain extensions such as .com and .de) though to register all the options. Today there are close to 1,000 with the release of new gTLDs. So choosing the extensions closely aligned with your business is strategic.
Pre-Emptively Monitoring for Malicious Registrations
There are services available to trademark holders to monitor registration activity linked to your brands. This may include the monitoring of registered and still available domain names exactly matching the brand name but also elements of brands as well as domain names made up of typos or phonetic misspellings. Furthermore, the secondary domain market can be subject of domain monitoring to keep track of domain sales concerning your brands and trademarks.
Among new gTLDs, one of the requirements was for new gTLDs open for public registrations to participate in a Trademark Clearinghouse that enables trademark holders to protect their rights. A brand that registers their trademarks in the TMCH will be notified when someone attempts to register a domain name that includes the brand. The maximum fee to register in the TMCH is $150 per trademark per year or under a pre-payment plan can be less.
For brands with many trademarks, this can be an expensive exercise. One new gTLD operator that has attempted to deal with this problem is Donuts which now manages 238 new gTLDs. Donuts developed their Domains Protected Marks List programs, DPML and DPML Plus. These programs allow brands to more easily and affordably block registrations of validated trademarks without requiring defensive purchases in each of their TLDs. The cost of DPML varies depending on the registrar.
Protecting your brand online is an important and necessary part of doing business today. Ignoring the issue if malicious actors register domain names that seek to take advantage of your business can seriously damage your reputation, lead to loss of business, and take months, even years, to recover from. Being aware of how to deal with the problems if they occur, and even pre-emptively dealing with them before they become an issue, can save you.
Here at Key-Systems we actively work to prevent abuse because we know how much time and effort, and money, has gone into building your brand. If you’ve got any questions, just ask us!