(Cyber) Squatting Not Allowed!

“Cybersquatting” has been a problem essentially since the internet’s earliest days. The law has caught up, giving aggrieved rights holders better control over their intellectual property.

Protective shield blocks internet search bar

Lisa Holubar, Ted Mahan and Peter Danos*

November 2, 2022 04:00 PM

Whether you're selling products or providing services, a strong online presence is critical to your success. That can be impeded by a type of digital hijacking called “cybersquatting,” in which a third-party registers, uses or traffics in an internet domain name with bad-faith intent to profit from a trademark that belongs to someone else. How can a rights holder protect itself? Here’s a hypothetical to illustrate.

You’ve ditched your day job, followed your dreams and started a company that sells pod-style chairs that appeal to camping enthusiasts and germaphobes alike. You name your business “Goldilocks’ Three Chairs” and apply for various trademarks, including the mark GOLDILOCKS’ THREE CHAIRS, the slogan “Sitting Just Right” and a logo for your fictional Goldilocks character. You also register the domain Almost overnight, you’re a success: Influencers and media outlets praise your product, and your clever social media ad campaigns go viral.

Six months after your launch, in an attempt to siphon some of your business, an unknown John Doe begins selling copycat chairs under the mark “Silversocks’ Three Hares,” using your exact slogan and a character that looks remarkably like yours. Using a registrar accredited by the Internet Corporation for Assigned Names and Numbers (ICANN), Doe renews a decades-old registration for the domain (the “Silversocks domain”) and registers a new one, (the “Typo domain”), a slight misspelling of your business name that redirects to the Silversocks domain. Doe uses a privacy protection service to conceal his identity and contact information; his website contains no contact info at all.

What recourse do you have? How can you make him stop misdirecting consumers to his site by leveraging your intellectual property when you have no idea who he is, where he lives or how to get ahold of him?

1. Cease and Desist

Generally, when a rights holder discovers someone violating its IP, the first step is to send a cease-and-desist letter. Here, though, the lack of contact information—coupled with privacy protection—makes it difficult, if not impossible, to locate Doe. You’re forced to use the “whois” information for Doe’s domains and send a letter using (if provided) the unique privacy protected email address listed for them.

If the registrar or privacy protection service does not provide an email address, you can send the letter to Doe’s registrar, privacy protection entity and domain host. Ideally, these entities will forward your letter to Doe and reveal his contact information to you. In our hypothetical, though, all three continue to shield his identity, and he doesn’t ID himself—or respond at all.

2. UDRP Proceeding

What next? Because you’re pursuing federal registration and can show common-law rights to your mark, a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding is possible. These start at $1,500 plus attorneys’ fees, depending on the arbitration body and the number of panelists the complainant selects.

Filing a UDRP complaint against the Doe registrant and/or the privacy protection entity initiates this process. In 5,000 words or fewer, you must allege: 1) an identical or confusingly similar registered domain name over which you have trademark rights; 2) the lack of rights by the entity that registered the offending domain; and 3) that the other domain was registered and used in bad faith. UDRP decisions generally hold that the third element’s “register” and “use” is a conjunctive requirement. You attach “annexes” of evidence to your complaint; Doe then has a chance to respond to it, and the UDRP panel decides the issue without a hearing. The process is designed to take 60 days, though its duration may vary.

Passed in 1999, the ACPA was enacted to combat the deliberate bad-faith registration of domain names in violation of trademark rights."

A successful complaint results in cancellation or transfer of the offending domain. There are no monetary damages available under a UDRP, and it doesn’t address infringement on another website at the offending domain.

Interestingly, a UDRP proceeding may yield different results for the Silversocks domain and the Typo domain. In both instances, the first two factors above favor you: one, the Typo domain is nearly identical to yours and the Silversocks domain is confusingly similar; two, Doe lacks any prior trademark rights of his own. However, this analysis diverges when it gets to the third factor: Doe registered the Typo domain months after your launch and uses it to redirect users to his chairs sold under your slogan and a confusingly similar logo, meaning the third factor is met. But although the Silversocks domain is being used in bad faith to siphon your customers, it was registered decades before your launch, such that Doe could not have considered your then-nonexistent right or registered the name in bad faith.

3. Federal Litigation

If a UDRP proceeding is undesirable, you can pursue a federal lawsuit under the Anticybersquatting Consumer Protection Act (ACPA). Passed in 1999, the ACPA was enacted to combat the deliberate bad-faith registration of domain names in violation of trademark rights. A valid ACPA claim requires you to plead and prove 1) a valid, protectable trademark; 2) that is distinctive or famous; 3) where Doe’s domain name is identical or confusingly similar to your mark; and 4) Doe used, registered or trafficked in the domain name; 5) with a bad-faith intent to profit.

First, your “Goldilocks’ Three Chairs” is a protectable mark because although it’s yet unregistered, you have applied for registration and have significant evidence of nationwide commercial use supporting a claim to protection. Second, you must show that your mark is distinctive as a “source identifier” by showing it’s inherently distinctive or has acquired secondary meaning, or that your mark is famous. In our hypothetical, despite the word “Chairs” in your mark, evidence of distinctiveness via secondary meaning can be established from your viral success since your launch.

Next, confusing similarity can be shown because Doe reregistered the Silversocks domain at the same time he registered, identical to your domain but for one extra S. Courts have found intentional registration of misspelled domain names is sufficient to show confusing similarity. And because potential customers visiting the Typo domain are redirected to Doe’s site, which has a similar design, slogan and logo to your own, confusingly similarity is evident.

Fourth, you must show that Doe used, registered or trafficked in the Silversocks domain. You can do so with screen grabs of the domain and website; registration is more difficult and will take more time to prove through discovery, as the “whois” information is privacy protected. (Trafficking is not at issue in our hypothetical.)

Finally, the ACPA requires that you prove Doe acted with bad faith to profit. Courts consider a long list of non-exhaustive factors when determining intent. Evidence of bad faith in our scenario includes 1) “typosquatting,” or misspelling of your domain; 2) the lack of contact information; and 3) confusingly similar site design, slogan and logo to sell copycat products. With your case proven, the ACPA authorizes injunctive relief, transfer of domain names, attorneys’ fees (in exceptional cases) and statutory damages between $1,000 and $100,000 per domain.

In sum, you have a variety of options available to solve a cybersquatting problem. It might take time to track down online rights violators, but with persistence and patience, you can protect your brand from cyberpirates.

Ted Mahan is an associate at Irwin IP. When he is not preparing defenses against cybersquatters, Ted’s practice focuses on patent litigation in district courts across the country and before the International Trade Commission.

Lisa Holubar is Head of Trademark and Advertising Litigation at Irwin IP. Lisa’s practice also encompasses trademark prosecution and counseling clients as to the selection and enforcement of their marks and advertising review.

*Now an associate at Croke, Fairchild, Duarte & Beres.

Headline Image: istock/Jasper Chamber, BlackJack3D

Related Articles


7 Things to Never Do After a Car Accident

by J.L. King

The actions you take after a car accident could determine the injury compensation you stand to receive. Learn seven things to never do after a car accident.

Cartoon of person with big pencil and check list


Why You Should Hire a Car Accident Lawyer

by Bill Winters

There are many benefits to hiring a car accident lawyer. They’ll handle your claim from start to finish and ensure you recover the best possible outcome. Learn more here.

Red fire truck beside two crashed cars


Nine Factors That Determine How Much to Expect from a Car Accident Settlement

by Aaron Tillman

Learn about the factors that can impact how much to expect for a car accident settlement in Portland, including what you can do to maximize how much you receive for an injury claim.

Yellow background with black and white animation of car crash


What Will a Car Accident Lawyer Actually Do for You?

by Joshua Fogelman

Learn what a car accident lawyer can do for you after a Texas car crash, including protecting your right to receive maximum compensation for your injuries and damages.

Hands pointing to a white car that has been damaged


5 Things To Consider When Choosing a Car Accident Lawyer

by Gregg Hollander

The lawyer you choose could make the difference between a winning and losing outcome. Learn five things to consider when choosing a car accident lawyer.

Two cars crashing into each other beside judge's gavel


Should I Get a Lawyer for a Car Accident That Wasn't My Fault?

by Mark Anderson

Learn about the reasons why you need to get a lawyer for a car accident claim and how a lawyer can help you get the compensation you deserve for injuries and damages.

Girl in orange sweater grasping injured neck


The Wolf Near Wall Street

by Rebecca Blackwell

When tensions among shared real estate owners reached their tipping point, Adam Leitman Bailey P.C. stepped in and solved a modern issue with an ancient remedy.

New York Real Estate with Adam Leitman Bailey

Where There’s No Will . . .

by Anthony J. Enea

. . . there’s no way for you to ensure your assets get distributed the way you would prefer. A guide to the consequences of exiting the stage without a last will and testament in New York.

Money symbol fading to dust

Family Owned and Operated

by David W. Holaday and John M. Goralka

In the era of sweeping tax reform, family businesses, particularly agricultural business, face many environmental and governmental risks. Outlined below are strategies to ensure family business survival in the face of these threats.

Man on tractor in open field

Split Decisions

by Jonathan Merel

Divorce is inevitably fraught with a torrent of emotions on both sides. Don’t let this occlude your ability to plan rationally and dispassionately to ensure as smooth a process as possible. Here are five common pitfalls to avoid.

Two people standing on either side of a heart made out of curving roads

Divorce in a Downturn

by Jennifer Brandt

Couples who choose to end their marriage during a recession must confront a host of difficult economic questions in addition to all the financial and emotional demands inherent in any divorce.

Piggy bank broken into different sections

Ghosts of Christmas Past

by Steven M. Visioli

’Tis the season . . . for a vacation without the kids. A recommendation against sharing co-parenting holidays with your ex.

Family walking on the beach at sunset

Making a List, Checking It Twice

by Lindsay Heller

Being a separated parent with kids can add stress to the holidays. These five tips can help you navigate the season, maintain your sanity—and ensure that the focus remains on the children’s happiness.

Couple drinking glasses of wine

Confronting the Inevitable

by Theresa Jo Gaffney

It’s never easy to contemplate one’s mortality. Yet end-of-life planning is essential at any age, as I learned all too well when my husband contracted COVID-19 several months into the pandemic. The peace of mind such forethought brings is essential should the worst come to pass.

Unseen figures holding hands

"Lawyer of the Year"

Woman standing in front of city backdrop

Jennifer Durham King

Financial Services Regulation Law

Chicago, IL


Understanding Illinois’ Workers’ Rights Amendment

by Gregory Sirico

Best Lawyers weighs in on Illinois' newly enacted Amendment 1, which sets to provide state workers with the right to collectively bargain and organize.

Figures standing on giant hand

Trending Articles

Announcing the 2023 The Best Lawyers in America Honorees

by Best Lawyers

Only the top 5.3% of all practicing lawyers in the U.S. were selected by their peers for inclusion in the 29th edition of The Best Lawyers in America®.

Gold strings and dots connecting to form US map

Best Lawyers: Ones to Watch in America for 2023

by Best Lawyers

The third edition of Best Lawyers: Ones to Watch in America™ highlights the legal talent of lawyers who have been in practice less than 10 years.

Three arrows made of lines and dots on blue background

The Best Lawyers in South Africa™ 2023

by Best Lawyers

Best Lawyers proudly announces lawyers recognized in South Africa for 2023.

South African flag

Could Reign Supreme End with the Queen?

by Sara Collin

Canada is revisiting the notion of abolishing the monarchy after Queen Elizabeth II’s passing, but many Canadians and lawmakers are questioning if Canada could, should and would follow through.

Teacup on saucer over image of Queen's eye


2022: Another Banner Year

by John Fields

Block O’Toole & Murphy continues to secure some of New York’s highest results for personal injury matters.

Three men in business suits standing in office

Famous Songs Unprotected by Copyright Could Mean Royalties for Some

by Michael B. Fein

A guide to navigating copyright claims on famous songs.

Can I Sing "Happy Birthday" in Public?

Announcing the 2023 The Best Lawyers in Canada Honorees

by Best Lawyers

The Best Lawyers in Canada™ is entering its 17th edition for 2023. We highlight the elite lawyers awarded this year.

Red map of Canada with white lines and dots

Wage and Overtime Laws for Truck Drivers

by Greg Mansell

For truck drivers nationwide, underpayment and overtime violations are just the beginning of a long list of problems. Below we explore the wages you are entitled to but may not be receiving.

Truck Driver Wage and Overtime Laws in the US

What the Courts Say About Recording in the Classroom

by Christina Henagen Peer and Peter Zawadski

Students and parents are increasingly asking to use audio devices to record what's being said in the classroom. But is it legal? A recent ruling offer gives the answer to a question confusing parents and administrators alike.

Is It Legal for Students to Record Teachers?

Thirteen Years of Excellence

by Best Lawyers

For the 13th consecutive year, “Best Law Firms” has awarded the most elite and talented law firms across the country through a thorough and trusted data review process.

Red, white and blue pipes and writing on black background

The Upcycle Conundrum

by Karen Kreider Gaunt

Laudable or litigious? What you need to know about potential copyright and trademark infringement when repurposing products.

Repurposed Products and Copyright Infringemen

Choosing a Title Company: What a Seller Should Expect

by Roy D. Oppenheim

When it comes to choosing a title company, how much power exactly does a seller have?

Choosing the Title Company As Seller

Caffeine Overload and DUI Tests

by Daniel Taylor

While it might come as a surprise, the over-consumption of caffeine could trigger a false positive on a breathalyzer test.

Can Caffeine Cause You to Fail DUI Test?

Announcing The Best Lawyers in Australia™ 2023

by Best Lawyers

The results include an elite field of top lawyers and firms from Australia.

The Best Lawyers in Australia™ 2023

Announcing the 2022 Best Lawyers® in the United States

by Best Lawyers

The results include an elite field of top lawyers listed in the 28th Edition of The Best Lawyers in America® and in the 2nd Edition of Best Lawyers: Ones to Watch in America for 2022.

2022 Best Lawyers Listings for United States

Announcing The Best Lawyers in Germany™ 2023

by Best Lawyers

The results include an elite field of top lawyers and firms from Germany.

Black, red and yellow stripes