Cybersquatting

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Cybersquatting (also known as domain squatting) is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.

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The term is derived from "squatting", which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own, rent, or otherwise have permission to use.

Terminology

In popular terms, "cybersquatting" is the term most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of trademark rights. However, precisely because of its popular currency, the term has different meanings to different people. Some people, for example, include "warehousing", or the practice of registering a collection of domain names corresponding to trademarks with the intention of selling the registrations to the owners of the trademarks, within the notion of cybersquatting, while others distinguish between the two terms. [1] In the former definition, the cybersquatter may offer to sell the domain to the person or company who owns a trademark contained within the name at an inflated price.

Similarly, some consider "cyberpiracy" to be interchangeable with "cybersquatting", whereas others consider that the former term relates to violation of copyright in the content of websites, rather than to abusive domain name registrations. [1]

Because of the various interpretations of the term, World Intellectual Property Organization (WIPO), in a 1999 report, approved by its member states, considered it as the abusive registration of a domain name. [2] [3]

International

Areas of WIPO Domain Name Complainant Activity 2021 Areas of WIPO Domain Name Complainant Activity 2021.png
Areas of WIPO Domain Name Complainant Activity 2021
Geographical Distribution of Parties in WIPO Domain Name Cybersquatting Cases in 2021. Top 25 countries Geographical Distribution of Parties in WIPO Domain Name Cases Top 25 in 2021.png
Geographical Distribution of Parties in WIPO Domain Name Cybersquatting Cases in 2021. Top 25 countries

Since 1999, the World Intellectual Property Organization (WIPO) has provided an administrative process wherein a trademark holder can attempt to claim a squatted site.

Trademark owners in 2021 filed a record 5,128 cases under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) with World Intellectual Property Organization (WIPO)'s Arbitration and Mediation Center, eclipsing the 2020 level by 22%. The surge pushed WIPO cybersquatting cases to almost 56,000 and the total number of domain names covered past the 100,000 mark. [4] As a matter of comparison, in 2006, there were 1823 complaints filed with WIPO, which was a 25% increase over the 2005 rate. [5]

The accelerating growth in cybersquatting cases filed with the WIPO Center has been largely attributed by the WIPO Center [6] to trademark owners reinforcing their online presence to offer authentic content and trusted sales outlets, with a greater number of people spending more time online, especially during the COVID-19 pandemic. Representing 70% of WIPO's Generic top-level domain (gTLD) cases, .com demonstrated its continuing primacy.

WIPO UDRP cases in 2021 involved parties from 132 countries. The top three business areas were Banking and Finance (13%), Internet and IT (13%), and Biotechnology and Pharmaceuticals (11%). [7] The U.S., with 1,760 cases filed, France (938), the U.K. (450), Switzerland (326), and Germany (251) were the top five filing countries. [8]

In 2007 it was stated that 84% of the claims made since 1999 were decided in the complaining party's favor. [5]

In the United States of America

Some countries have specific laws against cybersquatting beyond the normal rules of trademark law. For example, according to the United States federal law known as the Anticybersquatting Consumer Protection Act (ACPA), cybersquatting is registering, trafficking in, or using an Internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The United States adopted the U.S. Anticybersquatting Consumer Protection Act in 1999. This expansion of the Lanham (Trademark) Act (15 U.S.C.) is intended to provide protection against cybersquatting for individuals as well as owners of distinctive trademarked names. However, some notable personalities, including actor Kevin Spacey, failed to obtain control of their names on the internet because the US ACPA considers ownership of a website name "fair use" for which no permission is needed, unless there is an attempt to profit from the domain name by putting it up for sale. [9]

Jurisdiction is an issue, as shown in the case involving Kevin Spacey, in which Judge Gary A. Feess, of the United States District Court of the Central District of California, ruled that the actor would have to file a complaint in a Canadian court, where the current owner of kevinspacey.com resided. Spacey later won the domain through FORUM (formerly known as the National Arbitration Forum).

In Spain

In relation to cybersquatting, the Spanish Supreme Court issued the first sentence on this practice, relating it to the crime of misappropriation (STS 358/2022, of April 7). An unprecedented fact that established the legal fit of this computer crime in Spanish jurisprudence.

The case revolves around four members of the religious association Alpha Education for Comprehensive Health. They created a web page (the Internet domain of which was www.alfatelevision.org) and opened a bank and PayPal account for donations made to the association.

Sometime later, there were some disagreements between the members of the association and the four defendants who opened a new website, changed the internet domain and the passwords of the accounts, which redirected all the donations from the followers. Later, the association dismissed the four members.

The association's general secretary denounced the four members for a crime of misappropriation, and they were sentenced by the Provincial Court of Guadalajara, understanding that the internet domain was an asset of the association.

This resolution was appealed to the Supreme Court through an appeal, which was upheld by the court. Finally, the Supreme Court acquitted the four accused, understanding that the proven facts did not fit the crime of misappropriation. In this sense, it highlights that there are elements that did not concur in this case and that the actions carried out by these individuals (creation of another domain, change of passwords...) occurred prior to their termination and that, therefore, they were in willingness to do it.

In addition, the sentence reflects cases in which cybersquatting could have criminal relevance. In the first place, if the conduct sought to harm the rights of a brand, it could constitute a crime against industrial or intellectual property. Secondly, if the intention was to use the domain name in a deceitful way to cause an error in the transfer of assets, the accused could face a crime of fraud. Finally, if cybersquatting were used to attack a domain name, the accused would be facing a crime of computer sabotage. [10]

Notable cases

With litigation

Without litigation

Accused of cybersquatting

Social media

With the rise of social media websites such as Facebook and Twitter, a new form of cybersquatting involves registering trademark-protected brands or names of public figures on popular social media websites. Such cases may be referred to as "username squatting".

On June 5, 2009, Tony La Russa, the manager of the St. Louis Cardinals, filed a complaint against Twitter, accusing Twitter of cybersquatting. [21] The dispute centered on a Twitter profile that used La Russa's name, had a picture of La Russa, and had a headline that said "Hey there! Tony La Russa is now using Twitter." The profile encouraged users to "join today to start receiving Tony La Russa's updates." According to La Russa, the status updates were vulgar and derogatory. La Russa argued that the author of the profile intended, in bad faith, to divert Internet traffic away from La Russa's website and make a profit from the injury to La Russa's mark. [21] On June 26, 2009, La Russa filed a notice of voluntary dismissal after the parties settled the case. [22]

Efforts to curtail cybersquatting in social media

Social networking websites have attempted to curb cybersquatting, making cybersquatting a violation of their terms of service.

Twitter

Twitter's name squatting policy forbids cybersquatting similar to that seen in many domain name disputes, such as "username for sale" accounts: "Attempts to sell or extort other forms of payment in exchange for usernames will result in account suspension." [23] Additionally, Twitter has an "Impersonation Policy" that forbids non-parody impersonation. An account may be guilty of impersonation if it confuses or misleads others; "accounts with the clear intent to confuse or mislead may be permanently suspended." Twitter's standard for defining parody is whether a reasonable person would be aware that the fake profile is a joke. [24]

Soon after the La Russa suit was filed, Twitter took another step to prevent "identity confusion" caused by squatting by unveiling Twitter verification. [25] Usernames stamped with the "verified account" insignia is intended to indicate that the accounts are real and authentic. However, after the acquisition of Twitter by Elon Musk the verification system was changed to make it easier for individuals to get verified through the Twitter Blue program, [26] giving accounts "Profile Labels" instead – identifying ownership information such as whether the account is an individual, business, or a government. [27]

Facebook

Facebook reserves the right to reclaim usernames on the website if they infringe on a trademark. [28] Trademark owners are responsible for reporting any trademark infringement on a username infringement form Facebook provides. Furthermore, Facebook usernames require "mobile phone authentication". [28] In order to obtain a username, the individual needs to verify the account by phone.

Sources

Definition of Free Cultural Works logo notext.svg  This article incorporates text from a free content work. Licensed under CC-BY-4.0. Text taken from 2021 WIPO's Global Intellectual Property Filing Services​ , WIPO.

See also

Related Research Articles

<span class="mw-page-title-main">World Intellectual Property Organization</span> Specialised agency of the United Nations

The World Intellectual Property Organization is one of the 15 specialized agencies of the United Nations (UN). Pursuant to the 1967 Convention Establishing the World Intellectual Property Organization, WIPO was created to promote and protect intellectual property (IP) across the world by cooperating with countries as well as international organizations. It began operations on 26 April 1970 when the convention entered into force. The current Director General is Singaporean Daren Tang, former head of the Intellectual Property Office of Singapore, who began his term on 1 October 2020.

Reverse domain name hijacking, occurs where a rightful trademark owner attempts to secure a domain name by making cybersquatting claims against a domain name’s "cybersquatter" owner. This often intimidates domain name owners into transferring ownership of their domain names to trademark owners to avoid legal action, particularly when the domain names belong to smaller organizations or individuals. Reverse domain name hijacking is most commonly enacted by larger corporations and famous individuals, in defense of their rightful trademark or to prevent libel or slander.

Domain hijacking or domain theft is the act of changing the registration of a domain name without the permission of its original registrant, or by abuse of privileges on domain hosting and registrar software systems.

<span class="mw-page-title-main">Domain name speculation</span> Internet financial scheme

Domain name speculation, popular as domain investing, domain flipping or domaining in professional jargon, is the practice of identifying and registering or acquiring generic Internet domain names as an investment with the intent of selling them later for a profit.

The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of Pub. L.Tooltip Public Law  106–113 ) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed to thwart "cybersquatters" who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party. Critics of the ACPA complain about the non-global scope of the Act and its potential to restrict free speech, while others dispute these complaints. Before the ACPA was enacted, trademark owners relied heavily on the Federal Trademark Dilution Act (FTDA) to sue domain name registrants. The FTDA was enacted in 1995 in part with the intent to curb domain name abuses. The legislative history of the FTDA specifically mentions that trademark dilution in domain names was a matter of Congressional concern motivating the Act. Senator Leahy stated that "it is my hope that this anti-dilution statute can help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others".

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP currently applies to all generic top level domains, some country code top-level domains, and to all new generic top-level domains.

Gordon Sumner, p/k/a Sting v Michael Urvan was the 2000 dispute before World Intellectual Property Organization between Sting, a prominent English musician and actor, and Michael Urvan, an American gamer, about ownership rights on the domain name "sting.com". The domain name was registered in 1995 by Urvan, who used the monikers "Stingray" and "Sting", to support his gaming activities. Urvan was the first individual to successfully defend against a domain name dispute brought against an individual by a celebrity.

<span class="mw-page-title-main">.me</span> Internet top level domain for Montenegro

.me is the Internet country code top-level domain (ccTLD) for Montenegro.

Prior to the globalization of the Internet, its assignment of domain names was administered within the research and academic communities through the Internet Assigned Numbers Authority (IANA). As the Internet grew to a global service, in the 1990s, there was increasing pressure to add more "generic" top-level domain names, beyond the initial set, such as .com and .org and the two-letter country codes. Extensive debate within the Internet operational community did not resolve this. Finally, a composite group was formed, to create a proposal for the enhancement. The International Ad Hoc Committee (IAHC) was composed of members named by a variety of Internet and International sponsoring organizations.

<span class="mw-page-title-main">Trademark</span> Trade identifier of products or services

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies a product or service from a particular source and distinguishes it from others. A trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. Trademarks used to identify services are sometimes called service marks.

Typosquatting, also called URL hijacking, a sting site, a cousin domain, or a fake URL, is a form of cybersquatting, and possibly brandjacking which relies on mistakes such as typos made by Internet users when inputting a website address into a web browser. A user accidentally entering an incorrect website address may be led to any URL, including an alternative website owned by a cybersquatter.

<span class="mw-page-title-main">Greenberg & Lieberman</span>

Greenberg & Lieberman is a national and international law firm based in Washington, D.C. Established in 1996 by Michael Greenberg and Stevan Lieberman, the firm is known for its expertise in the technology-law areas of intellectual property, trademark infringements, domain names, virtual worlds, and software and was listed among 16 influential entities in the field of domain names in 2010. A "boutique law firm", Greenberg & Lieberman credited for being among the first in the world to begin generating a significant revenue and client base via online virtual worlds such as Second Life. Greenberg & Lieberman are also noted for their involvement with media law and military law.

<i>Beck v. Eiland-Hall</i> Lawsuit filed by political commentator Glenn Beck against Isaac Eiland-Hall

Beck v. Eiland-Hall was a case filed in 2009 before the World Intellectual Property Organization (WIPO), a United Nations agency. It was filed by political commentator Glenn Beck against Isaac Eiland-Hall, concerning the website "GlennBeckRapedAndMurdered­AYoungGirlIn1990.com". Eiland-Hall created the site as a parody to express the view that Beck's commentary style challenged his guests to prove a negative. The site's name was based on a joke first used by comedian Gilbert Gottfried at the 2008 Comedy Central Roast of Bob Saget, in which Gottfried jokingly implored listeners to disregard the (non-existent) rumor that Saget had raped and murdered a girl in 1990. Online posters began an Internet meme comparing Gottfried's joke with Beck's style of debate, by requesting Beck disprove he had committed the act in question. Eiland-Hall launched his website on September 1, 2009.

<i>Lamparello v. Falwell</i> 2005 American legal case

Lamparello v. Falwell, 420 F.3d 309, was a legal case heard by the United States Court of Appeals for the Fourth Circuit concerning allegations of cybersquatting and trademark infringement. The dispute centered on the right to use the domain name fallwell.com, and provides discussion on cybersquatting as it applies to criticism of a trademark.

Michael Greenberg is an American lawyer, regarded as a legal expert in intellectual property law and patent law. He is a partner of the Washington, D.C.-based law firm, Greenberg & Lieberman, with Stevan Lieberman, established in 1996. As part of the firm, Greenberg has been involved in hundreds of UDRP or trademark infringement disputes and is a well-regarded and experienced litigator, with particular expertise in patent infringement cases.

<i>Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.</i>

Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. was the first case to be decided by the Supreme Court of India on the issue of domain name protection, and dealt with two businesses employing variations on the same mark ("Sify") in their respective domain names.

<span class="mw-page-title-main">Zak Muscovitch</span> Canadian intellectual property lawyer (born 1971)

Zak Muscovitch is a Canadian intellectual property lawyer. He is the founder of Domain Name Law Reports and has represented clients before domain name arbitrations in cases against companies like Google, Torstar, and Molson.

<span class="mw-page-title-main">Trademark Clearinghouse</span> Database of trademarks for gTLDs

The Trademark Clearinghouse is a database of validated and registered trademarks established by ICANN to assist trademark holders prevent infringing behavior in the Domain Name System. In combination with the Uniform Rapid Suspension System (URS), it is the second significant attempt by ICANN to handle the "Trademark Dilemma". The first attempt was the Uniform Domain-Name Dispute-Resolution Policy.

Stevan H. Lieberman is an American lawyer, regarded as a legal expert in intellectual property law and patent law. He is a partner of the Washington, D.C.-based law firm, Greenberg & Lieberman, with Michael Greenberg, established in 1996. As part of the firm, Lieberman has been involved in hundreds of UDRP or trademark infringement disputes, and he is considered a pioneer in the technology-law areas of virtual worlds, domain names and software, cited by CNN as "among the virtual world's earning elite." Among the first lawyers in the world to begin generating a significant revenue and client base via online virtual worlds such as Second Life; he is the co-founder and CEO of two virtual reality websites.

<span class="mw-page-title-main">Crappytire.com</span> Website of a Canadian company

Crappytire.com was a website and domain name at the centre of a 2001 spat between Canadian retailer Canadian Tire and London, Ontario resident and website owner Mick McFadden. Canadian Tire, which alleged that McFadden was Cybersquatting as the public had associated "Crappy Tire" with its trademark name, took the case to the World Intellectual Property Organization (WIPO). By June 2001, the WIPO decided against Canadian Tire, stating that the company did not own the rights to the "Crappy Tire" expression. In 2002, Canadian Tire purchased the Crappytire.com domain, along with Crappytire.net and Crappytire.ca.

References

  1. 1 2 "WIPO Internet Domain Name Process". World Intellectual Property Organization. April 30, 1999. Retrieved 16 March 2022. CC-BY icon.svg Text was copied from this source, which is available under a Creative Commons Attribution 4.0 International License.
  2. ↑ "The management of internet names and addresses: intellectual property issues. Final report" (PDF). WIPO. 30 April 1999.
  3. ↑ "Administrative Panel Decision". WIPO . An early UDRP decision regarding the domain name wal-marksuck.com. 2000.{{cite web}}: CS1 maint: others (link)
  4. ↑ "Total Number of WIPO Domain Name Cases and Domain Names by Year" (PDF). World Intellectual Property Organization . 10 February 2022. p. 9.
  5. 1 2 "U.N: Cybersquatting complaints rise". Yahoo! News. March 12, 2007. Archived from the original on March 21, 2007.
  6. ↑ "Innovative Activity Overcomes Pandemic Disruption - WIPO's Global Intellectual Property Filing Services Reach Record Levels". World Intellectual Property Organization. 10 February 2022.
  7. ↑ "Areas of WIPO Domain Name Complainant Activity (2021)" (PDF). World Intellectual Property Organization . 10 February 2022.
  8. ↑ "Geographical Distribution of Parties in WIPO Domain Name Cases Top 25 (2021)" (PDF). World Intellectual Property Organization . 10 February 2022.
  9. ↑ McCarthy, Kieren (26 Nov 2001). "Kevin Spacey loses pivotal cybersquatting court case". The Register. Retrieved 2016-09-27. In the Anticybersquatting Consumer Protection Act 1999, US Congress accepted that as long as there is no attempt to sell on a "personal name" Web site for profit, then it is an example of "fair use" and permission is not needed from the individual in question.
  10. ↑ "El Tribunal Supremo se pronuncia por primera vez sobre el delito de apropiación indebida de un dominio de internet". Consejo General del Poder Judicial. April 25, 2022. Archived from the original on Apr 25, 2022. Retrieved 2022-05-13.
  11. ↑ "A hit for Jethro Tull in domain name dispute". The Independent. 2000-07-31. Retrieved 2013-09-22.
  12. ↑ "Madonna wins cybersquatting case". AllBusiness.com. Internet Business News. Oct 17, 2000. Archived from the original on 2007-02-14. Retrieved 2008-07-22.
  13. ↑ Arbitration and Mediation Center. "Administrative Panel Decision Primedia Magazine Finance Inc. v. Next Level Productions". WIPO. Retrieved 2013-09-22.
  14. ↑ "Deutsche Lufthansa AG v Future Media Architects, Inc". Adrforum.com. Archived from the original on Jan 28, 2016. Retrieved 2016-09-27.
  15. ↑ "Panavision Int'l, L.P. v. Toeppen | Internet Trademark Case Summaries". Finnegan. Archived from the original on 2016-10-01. Retrieved 2016-09-27.
  16. ↑ Arbitration and Mediation Center. "WIPO Domain Name Decision: D2017-0441". World Intellectual Property Organization. Retrieved 2017-08-15.
  17. ↑ Arbitration and Mediation Center. "WIPO Domain Name Decision: D2017-0730". World Intellectual Property Organization. Retrieved 2017-08-15.
  18. ↑ Arbitration and Mediation Center. "WIPO Domain Name Decision: D2017-0872". World Intellectual Property Organization. Retrieved 2017-08-15.
  19. ↑ Arbitration and Mediation Center. "WIPO Domain Name Decision: D2017-1079". World Intellectual Property Organization. Retrieved 2017-08-15.
  20. ↑ Nowicki, Cole. "A Good Place: The happy accident of mistakenly logging onto gail.com". The Outline. Retrieved 2023-01-26.
  21. 1 2 "seeLa Russa Complaint, La Russa v. Twitter, Inc., No. CGC-09-488101, 2009 WL 1569936". Citmedialaw.org. Retrieved 2013-09-22.
  22. ↑ "seeLa Russa Notice of Voluntary Dismissal, La Russa v. Twitter, Inc., No. CGC-09-488101, 2009 WL 1569936". Citmedialaw.org. Retrieved 2013-09-22.
  23. ↑ "Twitter Support: Name Squatting Policy". Help.twitter.com. Archived from the original on 2009-07-01. Retrieved 2013-09-22.
  24. ↑ "Twitter Support: Impersonation Policy". Help.twitter.com. Archived from the original on 2009-07-01. Retrieved 2013-09-22.
  25. ↑ "About verified accounts | Twitter Help Center". Twitter . Retrieved 2016-09-27.
  26. ↑ "Twitter Verification requirements - how to get the blue check". help.twitter.com. Retrieved 13 January 2023.
  27. ↑ "About profile labels". help.twitter.com. Twitter. Retrieved 13 January 2023.
  28. 1 2 "Help Center, FACEBOOK". Facebook.com. Retrieved 2013-09-22.
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