Cybersquatters are people who register domain names that are identical or similar to well-known marks… and then try to sell the domain to the mark owner for an inflated sum of money.
This has been done to everyone from Julia Roberts and Bruce Springsteen to the organization PETA and the financial institution Paine Webber.
The Internet Corporation for Assigned Names and Numbers (ICANN) was established around 1999, which authorized a supervisor of domain name registrations, and adopted an on-line arbitration system for resolving domain name disputes.
In 2005, actor Morgan Freeman won the rights to use the domain name ‘www.morganfreeman.com’, which was being illegally used by the company Mighty LLC.
Freeman applied for a trademark from the US Patent and Trademark Office when he found out that Mighty LLC was using his domain name ‘in bad faith to divert Internet traffic to a commercial search engine’. Ultimately, the arbitrators for the World Intellectual Property Organization (WIPO) – the intellectual property arm of the United Nations – agreed with Freeman and determined that Freeman’s illustrious career made his name sufficiently recognizable in the entertainment and movie spheres.
Nicole Kidman, Julia Roberts, Venus and Serena Williams have been successful in getting their domain names from cybersquatters under ICANN, Others, like Sting and Bruce Springsteen have not been as successful. However, registering a trademark to a name will provide added protection against cybersquatters trying to benefit financially from an already well-known domain name.
Should I TRADEMARK my name?
Trademark infringement existed before the Internet, but the ease of registering domain names has increased the challenges of trademark rights. Because anyone from high school students to multi-million dollar corporations can register domain names at little expense, it may be a good idea to register your name if you feel it could be threatened by a cybersquatter.
This is especially true for people whose names are also their profession, like actors, car dealers, even fashion designers.
Designer Ralph Lauren has had his name trademarked since 1972 for added protection. Fashion designer Donna Karan found her trademark useful when she fell victim to a dispute over her name. A man unknown to her, Richard Wilson, had registered the domain name www.dkny.biz. Karan had already owned www.dkny.com and www.donnakaran.com, and filed suit with the WIPO stating Wilson registered the domain name in bad faith. The WIPO panel agreed with Karan, requiring the domain name to be transferred from Wilson to The Donna Karan Company.
In order to have a domain name cancelled or transferred to the trademark owner under law, the owner must prove that:
- The domain name is identical or confusingly similar to the trademark;
- The registrant has no right or legitimate interest in the domain name; and
- The domain name has been registered and is being used in bad faith.
