KNOW YOUR RIGHTS

Domain Name Registrations Generallythedomain name to the mark owner or any third party
As a general rule, you can register any domain namefor financialgain without having used, or having an intent
that is notalready registered (subject to trademarkto use, the domainname in the bona fide offering of
considerationsdiscussed below). If your domain name isany goods or services, or theperson's prior conduct
sufficientlydistinctive, for example, jtdbizopps.com, theindicating a pattern of such conduct."
bit before theA common problem is identifying the culprit. In Jan
.com may also be a common law trademark (unless,Tallent-
of course, it'sregistered and then it's a registeredDandridge's case, for example, the only information
trademark). If you DO havea distinctive domain name,about theperpetrator Registrant: Dave Web
then the discussion in the nextsection applies to you.(JTDBIZOPPS-COM-DOM) Buy This Domain 5
If you don't have a distinctive domain name, however,Tpagrichnery St ., # 33
and bythis I mean a name that is "descriptive" or inYerevan, Armenia 375010 AM 208.978.3555 Call me
general usage,for example, "home-business.com", thenskeptical, but somehow I doubt that's a real name
this name will be neithera common law trademark norandaddress. Fortunately, the Act has anticipated this
a registrable trademark.problem:
In this case, once you've lost your domain name"The owner of a mark may file an in rem civil action
registration,you are, not to put too fine a point on it,against adomain name [an "in rem" proceeding is an
screwed. You don'thave much in the way of recourseaction against thething rather than against a defendant
other than for the "generic"legal avenues which may- in this context, itmeans that the court can make an
well be too expensive for you to pursue.order in relation to the domainname itself rather than
These avenues are discussed below.against Dave Web personally such asordering him to
=> Domain Names and Trademarkssurrender the domain name] ... ".
On the other hand, if you have a distinctive domainAnd as for remedies, assuming you are able to identify
name (i.e.,one that is not in common usage), then thatyourparticular scumbag, these include injunctions and
name is also likelyto be a common law trademarkdamages
(unless, as stated above, you'veregistered it, in which(either actual or, in a case where your individual name
case it's a registered trademark. And,if you do have ais atissue, statutory damages of between $1,000 and
common law trademark, I would recommend thatyou$100,000 perdomain name).
register it. Registration can only strengthen your=> Generic Legal Avenues
position.)Whether or not you can pursue an action under the
The law generally sides with the pre-existingAct, there area number of legal avenues open to
trademark ownerover the domain name holder. Inanyone in Jan's situation (andby that, I mean, someone
addition, the U.S. has enactedthe federalwho is using the domain name to pointto a site that
Anti-Cybersquatting Consumer Protection Act (thedamages your reputation).
"Act"). Under the Act, you can sue a cybersquatter toFirst off, let's recognize this practice for what it is.
get backyour domain name and sometimes damagesExtortion. Pure and simple. It's a crime. So is
to boot. So, what'sactionable under the Act? Here's ancriminaldefamation. Write a strongly worded cease
extract from the Act itself:and desist letter tothe offender, threatening to report
"A person shall be liable in a civil action by the ownerthem to the District
of amark, including a personal name which is protectedAttorney and/or the police and the Federal Trade
as a mark ...if, without regard to the goods or servicesCommission aswell as instituting a civil suit. You are
of the parties, thatperson ­more likely to get aresult if the letter comes from your
(i) has a bad faith intent to profit from that mark ...; andattorney.
(ii) registers, traffics in, or uses a domain name thatIf the offender doesn't comply, report them. As for
­what actionwill be taken, your guess is as good as
(I) in the case of a mark that is distinctive at the timemine but at least you'vedone what you can.
ofregistration of the domain name, is identical orIf you have the resources to do so, you can also bring
confusinglysimilar to that mark; (II) in the case of acivilproceedings against the offender on the same
famous mark that isfamous at the time of registrationgrounds. Theconduct in question is egregious enough
of the domain name, isidentical or confusingly similar tothat you may well getpunitive damages awarded in
or dilutive of that mark; oryour favor.
(III) is a [registered] trademark ..."Finally, and I HATE to even suggest this, the
In terms of what constitutes "bad faith", the Actmostcost-effective option of all may be to pay what is
provides thatthe court may consider factors (amongdemanded.
others) such as:That at least gets the domain name back under
"The person's [i.e., the alleged cybersquatter's] intentYOUR control whereit belongs. And there's nothing to
todivert customers from the mark owner's onlinestop you turning around andreporting the individual in
location to a siteaccessible under the domain namequestion to the DA, police, FTCetc.. In fact, paying over
that could harm the goodwillrepresented by the mark,the money may be your best chance ofidentifying the
either for commercial gain or with theintent toperpetrator so you can initiate a criminalprosecution.
disparage the mark, by creating a likelihood ofconfusionOf course, all of this is damage control which is a
as to the source, sponsorship, affiliation, orendorsementVERY poorsubstitute for prevention. So go back to
of the site; andItem 1. and calendaryour domain name due dates to
"the person's offer to transfer, sell, or otherwise assignavoid getting into this mess inthe first place.