Issue link: http://read.dmtmag.com/i/348131
I DA U N I V E R S A L J u l y -Au g u s t 2 0 1 4 11 LEGAL LINE Robert W. McIntyre IDA Association Legal Counsel Continued on page 56 O ur fi rm recently had an internal seminar on the exploding cybersquatting cri- sis. I think that we all were simply blown away by the extent and the severity of the problem. I then decided to make this situation the topic of the next Universal article, so that all of our mem- bers will have a good idea of the legal aspects of this phenomenon. Since the seminar was given by one of our partners, Chris Corpus, who has also represented our clients in domain disputes, I will defer to him as the "guest speaker" for this article. Below, Chris writes on "cybersquatting," which defi nes the use of a domain name with "a bad faith intent to profi t from the goodwill of a trademark belong- ing to a third-party." Examples would be www.valuepart.com, www.me moparts.com, and the one we like the best, www.attor- neys.com. ese examples show how a domain name may consist of a business' corporate name, a trademark and a generic word, but may also need to be protected from bad faith use. Now, from Chris: "If it appears that cybersquat- ting may be occurring, multiple avenues are available to attempt a shut-down of the activities. A lawsuit may be fi led asserting the statutory action of cybers- quatting, a lawsuit may be fi led alleging trademark infringement/ unfair business practices (Lan- ham Act), or an arbitration may be fi led. e focus of this article will be on the arbitration process, What We Don't Know Can Hurt Us adopted by the Internet Corpo- ration for Assigned Names and Numbers (ICANN), referred to as the Uniform Dispute Resolution Policy (UDRP). Every registrar (i.e. – Godaddy) has agreed to abide by this arbitration process, and each registrant of a domain name has also agreed to abide by this arbitration process as a con- dition of obtaining a registered domain name. e arbitration process is pre- ferred over court action, because it usually takes about four months for a decision to be rendered, and there is only a fi ling fee of approximately $1,500. is arbitration process is far faster and cheaper than pursuing litiga- tion. However, the remedy in this arbitration is only the transfer of the domain name. e arbitration panel is not authorized to award any type of monetary dam- ages. But, if it is believed that an arbitration ruling is erroneous, a lawsuit may be fi led to appeal the ruling. So, if you are a manufacturer or seller of component parts or replacement parts for EOM machines, what type of domain name are you able to use to alert, educate or inform Internet users of your business or product off erings? A procedure has been estab- lished in an eff ort to determine whether the registration of a domain name is considered to be cybersquatting. In this procedure, all of the following three elements have to be established: (1) e domain name is identi- cal or confusingly similar to a trademark in which another company has rights; and (2) e party that registered the disputed domain name has no rights or legitimate interests with respect to the disputed domain name; and (3) e disputed domain name was registered and is being used in bad faith. e arbitration party alleging that cybersquatting is occurring is referred to as the complain- ant. e party that registered the disputed domain name is referred to as the registrant. Now that we are all on the same page with this terminology, the fi rst element that the com- plainant must establish is that the disputed domain name is similar to a trademark in which the complainant has rights. is is a pretty low hurdle to hop over. If the complainant has a trademark registered with the United States Patent and Trademark Offi ce, the complainant will be able to satisfy this element as a threshold matter. e complainant's establish- ment of the second element – that the registrant has no rights or legitimate business interests in the disputed domain name, or