Brand Jacked – Protecting Your Digital Identity from Cybersquatters
Let’s talk about the dodgy practice of registering domains, the same or like existing trademarks or brands, with the sole intent to profit from reselling the domain, or misleading traffic to the ‘dodgy’ website. Let’s look at Cybersquatting.
What is Cybersquatting?
Cybersquatting, also referred to as Domain Squatting, is the practice of registering, selling, or using a domain name with the intent of profiting from the goodwill of someone else’s trademark(s). It typically involves registering a domain name that is, the same as, or like, an established trademark or brand name. The cybersquatter may then look to sell the domain name back to the trademark, or brand, owner for a profit. Or use the domain to sell competing products or services and misleading customers, and visitors, into thinking they were dealing with the real brand owner.
The History of Cybersquatting
The term may be new to you, but the practice is not new, the term “cybersquatting” was first coined in the late 1990s, as the commercial use of the Internet began to grow rapidly. As more and more businesses began to establish a presence online, some individuals and companies saw an opportunity to register domain names that were the same, or like established trademarks and brands, with the sole intention of profiting from the goodwill of those marks. In the early days of the Internet the registration of domain names was relatively inexpensive, and there were few regulations in place to protect trademark holders.
In 1999, the Anticybersquatting Consumer Protection Act (ACPA) was passed in the United States, which made cybersquatting a federal crime. In the UK, there is no specific law relating to cybersquatting, however there is protection under the UK’s Trademarks Act 1994.
In 2013, the Uniform Domain Name Dispute Resolution Policy (UDRP) was introduced, which provided a streamlined and efficient process for resolving disputes over domain names. This policy is not dependent on legal jurisdiction, so is widely used by trademark holders around the world to challenge domain names that they believe were registered in bad faith.
Nowadays, cybersquatting still exists, but it is not as widespread as it once was. The registration of domain names is more heavily regulated, and trademark holders have more legal recourse to challenge cybersquatting. However, new forms of cybersquatting have emerged, like typo squatting, where the squatter registers a domain name that is like a well-known brand but with a typo, or phishing, where the squatter creates a website that looks like a legitimate website in order to trick people into giving away personal information.
Is it Illegal to Cyber Squat?
Cybersquatting is illegal under the Anticybersquatting Consumer Protection Act (ACPA) in the United States.
There is no specific law in the UK that relates to cybersquatting, however, there are legal remedies available to trademark holders under the UK’s trademark legislation, and domain name disputes can be resolved through the UK’s National Arbitration Service (NAS) which is an approved alternative dispute resolution provider for domain name disputes.
Plus, trademark holders can take legal action against cybersquatters under, both the UK’s Trademarks Act 1994, as well as under the EU Trademark Regulation (2017/1001). These laws prohibit the registration, use or trafficking of a sign that is identical or similar to a registered trademark in relation to goods or services that are identical or similar to those for which the trademark is registered, where that use would take unfair advantage of, or be detrimental to, the distinctive character or repute of the trade mark.
If you are suffering from a cybersquatting ‘event’, and as a warning to anyone considering cybersquatting activities, note – it is not always necessary to prove that the registrant of a domain name intended to make an unfair profit. It can be sufficient to show that the registrant acted in bad faith by registering and using a domain name that is identical or similar to a registered trade mark and that this will likely cause confusion among consumers. Every now and then laws show common sense!
Some Cybersquatting Examples
We like examples that illustrate what we are discussing:
- A company registers the domain name “nike-shoes.com” even though they have no affiliation with the company Nike and offers to sell the domain name to Nike for a profit.
- An individual registers the domain name “mcdonalds.com” even though they have no affiliation with the fast-food chain McDonald’s and uses the website to sell competing products or services.
- A company registers the domain name “googlesearch.com” with the intent of diverting traffic to their own search engine, or profiting by selling ads on the site
- A company registers domain names that include misspellings of a well-known brand, such as “amzom.com”with the intent of diverting traffic to their own website or profiting by selling ads on the site.
And, a few real world Cybersquatting cases
These are household names, and possibly seen as having deep pockets therefore prime, profitable, candidates for cybersquatting.
- In 2002, the fast-food chain McDonald’s successfully sued the owner of the domain name “mcdonalds.cc” for cybersquatting.
- In 2011, the popular social media platform Facebook successfully sued the owner of the domain name “facebook-privacy.com” for cybersquatting.
- In 2012, the luxury car manufacturer Ferrari successfully sued the owner of the domain name “ferrari-official.com” for cybersquatting.
While these huge brands that were ‘attacked’ in the earlier days, the individuals had registered the domain name with the intent of profiting from the goodwill of the brands and misleading users, notice they were all sued.
While it is now harder to cybersquat, easier to detect cybersquatting and more appropriate laws make it easier to stop the practice, it still goes on:
- In 2021, the global tech giant Google successfully sued the owner of the domain name “googlesearch.com” for cybersquatting.
- In 2021, the popular social media platform TikTok successfully sued the owner of the domain name “tiktokdownload.com” for cybersquatting.
- In 2019, the popular ride-hailing company Uber successfully sued the owner of the domain name “uberpromo.com” for cybersquatting.
And were just as vulnerable in the in the UK:
- In 2020, the UK’s largest supermarket chain Tesco successfully sued the owner of the domain name “tesco-giftcard.co.uk” for cybersquatting.
- In 2021, the UK’s leading telecommunications provider, BT successfully sued the owner of the domain name “bt-internet.co.uk” for cybersquatting.
- In 2021, the UK’s leading car manufacturer, Jaguar Land Rover successfully sued the owner of the domain name “jaguarlandrover.co.uk”.
How to Identify and Recognise Cybersquatting?
OK – we know what Cybersquatting is and we know it’s still a ‘thing’ in 2023, how can we spot it when it happens? There are several ways to identify and recognise domain squatting:
- Look for similarities in the domain name and established trademarks. Cybersquatters often register domain names that are like well-known trademarks to divert traffic to their own sites.
- Check for the use of trademarked terms in the domain name or website content. Cybersquatters may use trademarked terms in their domain names or on their websites to create confusion and mislead consumers.
- Look for deliberate use of misspellings. Cybersquatters may register domain names that are like established trademarks, but with slight variations such as typos or misspellings.
- Look for the use of multiple, similar, domain names. Cybersquatters may register multiple domain names to maximise the chances of attracting traffic and profiting from the goodwill of established trademarks.
- Check for the use of the domain name for commercial gain. Cybersquatters often use the domain names they register to sell goods or services that are similar or competing to the brand they impersonate.
- Look for the use of the domain name to redirect to other sites or to simply load the website with adverts. These are clear indications that the owner of the domain has no real intention to use the website and is only looking to make money from it.
How to Prevent Cybersquatting and Protect Yourself from Domain Squatters:
Here’s a few tactics for protecting your brand, trademarks, and digital assets.
- Register your trademarked name and any variations of it as domain names. This will prevent cybersquatters from registering them first.
- Keep an eye on your trademark. Regularly search for similar or identical domain names that might be registered by cybersquatters.
- Use a domain name monitoring service. These services will notify you if a domain name like your trademark is registered.
- File a complaint with the National Arbitration Forum (NAF) or the World Intellectual Property Organisation (WIPO) if you believe a domain name is being used for cybersquatting. These organisations handle disputes over domain names and can transfer the domain name to the trademark owner if cybersquatting is found to have occurred.
- Trademark your brand name, logo, and tagline. This will give you a legal basis for acting against cybersquatters.
- Be pro-active in protecting your brand. The longer you wait the harder it will become to protect it.
- Be aware of the risks and be prepared to act quickly if you suspect someone is cybersquatting on your trademark.
How to Get Back a Domain Lost to Cybersquatting
If you have lost a domain to cybersquatting, or have detected a ‘similar’ domain cybersquattingf, there are several steps you can take to try to get it back, or stop the squatting
In the USA:
File a complaint with the National Arbitration Forum (NAF) or the World Intellectual Property Organisation (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP). These organisations handle disputes over domain names and can transfer the domain name to the trademark owner if cybersquatting is found to have occurred.
File a lawsuit against the cybersquatter under the Anticybersquatting Consumer Protection Act (ACPA) in the United States. This law provides for statutory damages, attorney’s fees, and injunctive relief for trademark holders who can prove that a domain name was registered with a bad faith intent to profit from the mark.
In the UK:
File a complaint with the UK’s National Arbitration Service (NAS) under the Nominet Dispute Resolution Service (DRS). This service handles disputes over domain names registered under the .uk domain and can transfer the domain name to the trademark owner if cybersquatting is found to have occurred.
File a lawsuit against the cybersquatter under the UK’s Trademarks Act 1994, as well as under the EU Trademark Regulation (2017/1001). These laws prohibit the registration, use or trafficking of a sign that is identical or similar to a registered trademark in relation to goods or services that are identical or similar to those for which the trademark is registered, where that use would take unfair advantage of, or be detrimental to, the distinctive character or repute of the trade mark.
More generic tactics include:
- Contact the domain registrar and request that they suspend or cancel the disputed domain name. Most registrars have a policy for handling disputes and will act if they determine that a domain name was registered in bad faith.
- Contact the hosting company and request that they take down the website associated with the disputed domain name. Most hosting companies have a policy against hosting websites that infringe on the rights of others.
- Reach out to the cybersquatter to negotiate a transfer of the domain name. This can be a quicker and less expensive option than going through a legal dispute.
We’re not a legal company, so it’s important to note that we’re only highlighting the problems of cybersquatting in this article. It’s also important to note that getting back a domain name lost to cybersquatting can be a complex process and that it may take some time to resolve the matter. We advise (and as we’ve stated, we’re not legal advisors) trying the ‘generic’ tactics first – if approaching these people directly doesn’t fend them off – consult with a lawyer or legal company who specialises in intellectual property law as they could be helpful in navigating the process.