What to do if your domain name gets cybersquatted?
July 8, 2024
Author: Leo Liu, Erica Chen
Cybersquatting refers to the act of a domain registrant preemptively registering a confusingly similar domain name in bad faith before the trademark or domain name holder does. Since the domain registration fees are relatively low, cybersquatters often register in bulk, hoping to sell a few of them back to the original rights holders at a high price.
Types of Cybersquatting
There are mainly two types of cybersquatting:
1. Holding a well-known trademark but failing to register a domain name in time, allows someone else to snatch it；
Case – WIPO Arbitration and Mediation Center
In the case of an Italian bank v. Mr. Li, the complainant had registered the “BPM” trademark as early as 2008. However, Mr. Li registered the disputed domain names “bancobpm.com” and “banco-bpm.com” in March 2016. In October of the same year, the date the Italian bank filed this complaint, Mr. Li applied to register the “Banco Bpm” trademark. Ultimately, the complainant successfully reclaimed the disputed domain name containing the bank’s “BPM” trademark, which Mr. Li had registered but not used.[1] Although Mr. Li subsequently appealed the decision to a Chinese court, the court dismissed Mr. Li’s claim and protected the bank’s legitimate rights and interests.
2. Holding a domain name containing the trademark, while similar domain names are registered by others；
Case-Asian Domain Name Dispute Resolution Center
In the case of an Israeli private company v. a Jiangxi company, the complainant had registered the “JVP” trademark as early as 2012 and owned domain names such as “jvpvc.com,” “jvpvc.biz,” and “jvpvc.info.” However, the respondent maliciously registered the “jvpvc.cc” and falsely claimed to be “Israeli Venture Capital Fund JVP,” misleading people into considering the website as the complainant’s official site. Ultimately, the dispute resolution center ordered that the disputed domain name “jvpvc.cc” be transferred to the Israeli company.[2]
Another relatively special circumstance is when the rights holder has already registered a domain name but forgets to renew it, resulting in the domain entering the auction process and being cybersquatted.
Taking the gTLD as an example, after a domain name expires, it will not be deleted immediately by the domain registrar. Instead, it goes through a roughly 30-day grace period, a 10-day auction period, a 30-day redemption period, and a final 5-day deletion period before its permanent deletion. The entire cycle takes about 75 days.
During the grace or auction periods, the domain name owner can easily renew the domain name at the original price or redeem it through the auction process. If the rights holder fails to notice the expiration during these periods, this provides an opportunity for cybersquatting. Cybersquatters are willing to participate in domain name auctions in hopes of selling the domain name back to the original holder at a higher price later – they assume the original holder still needs the domain but simply forgot to renew it.
The recent case handled by our firm falls into this category. We successfully helped FuJae Partners reclaim its domain name, which had expired and was registered by someone else, through the WIPO Arbitration and Mediation Center.
The procedures of Uniform Domain Name Dispute Resolution Policy (UDRP)
If a rights holder cannot reclaim his domain name(s) through negotiation with cybersquatters or is unwilling to bow to these “bad actors,” he needs to defend his rights through legal measures. One powerful tool in this regard is the Uniform Domain Name Dispute Resolution Policy (UDRP).
Substance
According to UDRP[3], three conditions must be met to file a domain name dispute:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the original domain name holder has rights; and
- current domain name holder has no rights or legitimate interests in respect of the domain name; and
- current domain name holder’s domain name has been registered and is being used in bad faith.
The preparation of a Complaint that satisfies the conditions set forth above is critical to the success of a UDRP case.
Procedures
After confirming that the above conditions are met, the complainant will proceed with the preparation of the complaint and the subsequent litigation process. The entire process generally consists of the following eight stages and takes approximately two months.
- Submit Complaint (provide a copy of the Complaint to the domain name registrar at the same time.)
- Submit payment within ten(10) calendar days
- Respondent’s due date (20 days)
- Notification of Panel Appointment (5 days)
- Panel renders a Decision (14 days)
- WIPO notifies the Decision to all parties and publishes the Decision online (3 days)
- Court proceeding waiting period (10 days)
- Implementation
Due to the low cost, high profits, and limited consequences, cybersquatting is hard to prohibit. Cybersquatters are often willing to preemptively register domain names containing newly registered trademarks and similar domain names of existing well-known corporations, or purchase domain names entering into auction processes to sell them back at a higher price to the original rights holders in the future. This is especially true for domain names entering auction processes where the original rights holder had previously used the domain names but probably failed to renew them out of negligence, resulting in the expired domain names entering the auction held by registrars. In such cases, cybersquatters often believe the original rights holder is more willing to buy back the domain name at a higher price.
Therefore, domain holders should check their renewal notices and expiration reminders and renew their domain names as early as possible. It’s ideal to renew the domain names within the grace period (typically 30 days after the expiration date) or redeem the domain name during the auction process. However, if these deadlines are missed and the domain has been maliciously purchased by someone else, there is no need to panic or yield to the cybersquatters. Legal action can be taken to reclaim the domain names.
- [1] https://www.wipo.int/amc/en/domains/decisions/text/2016/d2016-2160.html#_ftn2
- [2] http://odr.org.cn/Document/CN-1601042-C.pdf
- [3] https://www.icann.org/resources/pages/policy-2024-02-21-en
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