CYBERSQUATTING: PREVENTION

AND REMEDIATION STRATEGIES

NET2002 Washington, DC
April 18, 2002
Scott Bearby
NCAA Associate General Counsel
Copyright

Scott Bearby 2002. This work is the intellectual property of the author. Permission is
granted for this material to be shared for non-commercial, educational purposes, provided that this
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the author.

Cybersquatting defined

Uniform Domain Name Dispute Resolution

Policy - UDRP

Rules governing arbitration of disputes about

top-level domain names and some country
codes

Anti-Cybersquatting Consumer Protection

Act - ACPA

Statute relevant for infringement actions

brought in United States courts

UDRP Standard
(i) your domain name is identical or confusingly
similar to a trademark or service mark in which
the complainant has rights; and
(ii) you have no rights or legitimate interests in
respect of the domain name; and
(iii) your domain name has been registered and
is being used in bad faith.

ACPA - Standard

Use or variation of trademark or misleading

representation that is likely to cause
confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or
association or otherwise mislead

Cybersquatting: Strategy

Establish a budget
Domain names can be registered for as little as
$20/year
Consider registration of business critical
domain names
Those domain names that match a trademark
and those that are most important to keep out of
the hands of others

Cybersquatting: Strategy
Which domain name suffixes to choose?
.com, .net., .org
.info, .biz, and the other new top levels

Sunrise periods

Country codes

Commercially interesting letters

.tv., .ws, .us

Where you do business

UDRP

Binding arbitration agreed to by registrant at time of

registration.
Average arbitration fee is between $1,000 and $2,000,
depending on number of domain names at issue.
Process is streamlined with only electronic/paper
submissions.
Results can be obtained within several weeks from
submission.
Complainant receives transfer in over 60 percent of
cases completed.

When UDRP doesnt work

Case studies
NCAABASKETBALLODDS.COM v.
NCAAMENSBASKETBALL.COM
FINALFOURMERCHANDISE.COM V.
FINALFOURSEATS.COM

Settlement

Consider a written agreement.

Need to include all offending domain names.
Hold any compensation to transfer and registration
fees; hold payment until all domains are transferred.
Obtain agreement not to register other related
domain names in the future.
Obtain jurisdiction clause if further misconduct.
Be vigilant to make sure registrar completes
transfer.

Taking It To Court
ACPA

added to Lanham Act to assist courts

with application of traditional trademark law to
the Internet.
Effective

November 29, 1999.

Retroactive

characteristics.

Prospective

remedies.

Bad

faith, the critical element.

Litigation
Positives

Injunctive relief
Monetary damages

Negatives

Expensive

Intrusive

Experts
Attorney fees
Discovery

Part of the federal case backlog

Jurisdiction
Personal
Doing

business on the web

Passive sites
Interactive sites
In Rem

Other causes of action

Trademark infringement
Statutory and Common Law

Trademark infringement
proving likelihood of confusion

1) the strength or
distinctiveness of the
mark;
2) the similarity of the
two marks;
3) the similarity of the
goods or services that
the marks identify;
4) the similarity of the
facilities employed by
the parties to transact
their business;

5) the similarity of
the advertising used
by the parties;
6) the defendants
intent in adopting
the same or similar
mark; and
7) actual confusion.

Trademark dilution

Eight nonexclusive factors, including

the degree of inherent or acquired distinctiveness,
the duration and extent of the marks use,
the duration and extent of advertising and
publicity,
the geographic scope, the nature and use by third
parties,
and the registration on the United States Patent
and Trademark Office (USPTO) register

Unfair competition

unfair competition with respect to a

trademark is that 1) the name must have
acquired a secondary meaning or
significance and 2), defendant must have
unfairly used the name or a simulation of it
to the prejudice of plaintiffs interest

Questions