Wednesday, April 24, 2013

No, You Can't Register a Competitor's Name as a Domain Name

One of the most common types of domain name disputes that I see, is a brand owner complaining that one of its competitors registered a mis-spelling or confusingly similar domain name to its brand. The brand owner is usually justifiably upset because one of local or direct competitors took advantage of the brand owner's oversight in not registering all possible permutations of its brand as a domain name.

For example, Teddy Bear Grocery's, the operator of the fictional TeddyBearGroceries.com, would complain that the fictional Robert's Groceries, across town, registered TeddyBearsGroceries.com (with an extra 's'), and is forwarding the domain name to its own RobertsGroceries.com, thereby "stealing" Internet traffic, confusing consumers, making "illicit" revenue from misdirected online sales, and infringing trademark rights.

Often, the competitor who perpetrated this, e.g. Robert, will claim that the infringing domain name was "available for registration" and that he is the rightful owner of it because he bought it for $10 from Godaddy, for example. If Teddy's has a common law or registered trademark however, which is probably easy to prove in the circumstances, then this is clearly a case of cybersquatting, and Robert had no right to have registered the infringing domain name in bad faith, and has no legitimate interest in it.

If a cease and desist letter is sent to Robert by Teddy's lawyers, Robert should probably comply and transfer the domain name, and hope that Robert leaves it at that, as otherwise, Robert could be liable under the Anti-Cybersquatting Consumer Protection Act, which carries penalties of up to $100,000.00 per cybersquatted domain name.

Zak Muscovitch

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