Cybersquatting

Amber Bennett

CSC 540 – Dr. Lyle

April 13, 2015

Bennett 1

INTRODUCTION

What is squatting? To squat is“to live in a building or on land without the owner's permission and without paying(Merriam-Webster, 2015).”Similarly, cybersquatting is “the registration of a commercially valuable Internet domain name, as a trademark, with the intention of selling it or profiting from its use(Dictionary.com, 2015).”The term cybersquatting comes from the combination of cyber, meaning Internet, and squatting.

For example, hypothetically, Walmart doesn’t have its own website yet and someone not affiliated with Walmart decides to buy the domain They use this website as a forum to post offensive content (not necessarily about Walmart itself), giving Walmart a bad image. Generally, cybersquatters will offer to sell the domain name to the affected party at an inflated price in order to profit from it.

The following paragraphs will cover a short history of cybersquatting, a few of the many cases that involved cybersquatting and their outcomes, and the laws that are in place to help combat and protect against cybersquatting.

BRIEF HISTORY

It was around 1999 when cybersquatting really became a problem. Businesses were resisting putting themselves on the Internet, which opened up a pipeline for cybersquatters. Dennis Toeppen was one of the first cybersquatters, registering marks of famous companies before they did themselves and then demanding for each one.(Kossler, Mazzullo, Salopek, Sides, & Taddy) Since domain names are registered on a first come, first serve basis, there wasn’t anything that could stop someone from buying a domain name that may be the name of a big company or a famous celebrity.

TYPES OF CYBERSQUATTING

Cybersquatting has a few different names and can also be executed in a few different ways. Cybersquatting has also been called domain name squatting. The most common way cybersquatting happens is when a squatter buys a domain name that is usually a trademark of a company or the name of a specific person. For example, like I mentioned before, if someone bought the domain Walmart.com before Walmart did.

Another type of cybersquatting is referred to as typosquatting. Typosquatting is when someone buys a domain name that is similar to another domain name with small typos that people commonly make. This type of cybersquatting relies on common typos made by users. Typosquatting is also referred to as URL hacking. A notorious typosquatter was a man by the name of John Zuccarini who registered domain names that were typos of websites that were often visited by children among many other cases of cybersquatting. He was using these specific domains to redirect children to porn sites. Zuccarini had made millions of dollars since the Internet was young. Zuccarini was arrested in 2003 “under new legislation protecting children online.” (McCarthy, 2003)

CYBERSQUATTING CASES

Donald Trump vs. J. Taikwok Yung

J. Taikwok Yung developed four different websites that were in relation to Donald Trump:

  • trumpmumbai.com
  • trumpindia.com
  • trumpbeijing.com
  • trumpbudhabi.com

These sites were being used to parody Trump and usually provided disparaging commentary about him and his shows “The Apprentice” and “The Celebrity Apprentice”. “Trump is a trademark with the United States Patent and Trademark Organization and the name is associated with high-profile business ventures.”Trump and his lawyers wanted Yung to pay $100,000 for each of the domain names. Instead, Yung must pay $32,000 in damages to Trump.(Draznin, 2014)

Dell vs. BelgiumDomains, CapitolDomains, and DomainDoorman

“In a case quietly filed with the U.S. District Court for Southern Florida…Dell took aim at a stable of registrars…alleging that they are responsible for registering and profiting off of nearly 1,100 domains that were ‘confusingly similar’ to Dell’s various trademarks.” The three defendants were BelgiumDomains, CapitolDomains, and DomainDoorman. Dell also claimed that nearly a dozen Caribbean shell companies were involved as well as a man named Juan Pablo “JP” Vazquez who is said to be connected with the companies. (Krebs, 2007)

An example of one of the domains bought by the three companies was dellfinancialservices.com. It seemed that the companies were taking turns picking up the domain name every few days. David Steele, one of Dell’s attorneys stated, “The only thing better than registering a domain for five days, deleting it and getting a refund is to never having to purchase it at all.” Apparently, there is a five-day grace period, allowing a person to receive a refund, which is what these companies were doing. (Krebs, 2007)

Federal cybersquatting laws indicated that Dell could be awarded anywhere from $1,000 to $100,000, for each domain name. If the same domain names were considered a violation of the federal counterfeiting law, the damages could be worth up to $1,000,000 per domain name.(Krebs, 2007)

Julia Roberts vs. Russell Boyd

A man named Russell Boyd bought the domain name juliaroberts.com, devoting it to discussions about the actress Julia Roberts. He later listed the domain name on eBay and obtained a bid of $2,500. Understandably, this caught the attention of Roberts’ representatives and led Boyd and Roberts’ lawyers to an international arbitration panel that could lead to federal court. “The World Intellectual Property Organization (WIPO)…ruled that Boyd must relinquish control of the domain to the actress, in a case that may have far-reaching implications for so-called domain squatters.”(Hesseldahl, 2000)

Boyd claimed that he was never in it for the money and when Roberts’ camp offered him the $2,500 he would have made off of the eBay bid, he turned it down. Boyd is quoted saying:

“I didn’t want the money then or now…if she had called me up and said ‘Can we talk about this?’ the domain would have been hers. My first communication with them was the WIPO filing.”(Hesseldahl, 2000)

In March 2000, Roberts won the case over the domain name. While Roberts’ and her lawyers claim Boyd was using the domain in bad faith, Boyd sees it differently, stating, “Julia the multimillionaire and her team of lawyers have struck a powerful blow against the common man and his mistaken belief in free speech.”(Roberts reclaims her domain name, 2000)

Verizon vs. OnlineNic

Verizon Communications was awarded 33.2 million dollars in 2008 in a lawsuit against OnlineNic, an Internet services company. OnlineNic was accused “of trademark infringement and illegal ‘cybersquatting’…” Some of the names included were:

  • myverizonwireless.com
  • iphoneverizonplans.com
  • verizon-cellular.com

In total, there were 663 addresses registered by OnlineNic that were “identical or confusingly similar” to the Verizon trademark.(Bloomberg News, 2008)

“OnlineNic registered more than 900,000 domain names similar to some of the world’s biggest companies.” Some of these companies include:

  • Google
  • Adidas
  • The News Corporation’s MySpace
  • Wal-Mart Stores
  • Yahoo

They have been accused of using an automated process to register these addresses. The OnlineNic website claims that they have been an accredited registrar since 1996 for Icann (Internet Corporation for Assigned Names and Numbers). This organization “oversees the functioning of the Internet.” (Bloomberg News, 2008)

ANTI-CYBERSQUATTING LAWS

Anti-Cybersquatting Piracy Act (ACPA)

The ACPA states that “trademark holders now have a cause of action against anyone who, with a bad faith intent to profit from the goodwill of another’s trademark, registers, traffics in, or uses a domain name that is identical to, or confusingly similar to a distinctive mark, or dilutive of a famous mark, without regard to the goods or services of the parties.” Bad faith determination is as follows[1]:

  1. “If the registrant has any trademark or other intellectual property rights in the name.”
  2. “If this is a legal or nickname of the registrant.”
  3. “The registrant’s prior use of the domain name in connection with the good faith offering of goods and services…”
  4. “Lawful noncommercial or fair use of the mark in a website under the domain name…”
  5. “Intent to divert to a site that could harm the trademark owner’s goodwill…”
  6. “Offer to sell the domain name without having used or having an intent to use, it in the bona fide offering of goods or services, or a prior pattern of such conduct…”
  7. “International provision of misleading contact information in the domain name registration application or the history of such conduct.”
  8. “Warehousing of multiple domain names known to be identical or confusingly similar to distinctive marks or dilutive of famous marks, without regard to the goods or services of the parties…”
  9. “The extent to which a mark is distinctive or famous.”

This act gives trademark holders the chance to gain control of domain names that may be negatively affecting their name. However, a lot of the factors that go into determining bad faith are arbitrary and could be inconsistent from case to case. (Anti-Cybersquatting Piracy Act (ACPA))

Uniform Domain-Name Dispute-Resolution Policy (UDRP)

The UDRP states that “most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name.” Abusive registrations that are brought to light are usually expedited when the trademark holder files a complaint with a dispute-resolution service provider. (Internet Corporation for Assigned Names and Numbers, 2014)

A policy is started in one of two ways: “file a complaint in a court of proper jurisdiction” or “submit a complaint to an approved dispute-resolution service provider” in cases where the domain is being used to abuse the trademark.(Internet Corporation for Assigned Names and Numbers, 2014)

The UDRP Purpose reads as follows:

“This Uniform Domain Name Dispute Resolution Policy (the ‘Policy’) has been adopted by the Internet Corporation for Assigned Names and Numbers (‘ICANN’), is incorporated by reference into your Registration Agreement, and sets forth the terms and conditions in connection with a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you. Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy (the ‘Rules of Procedure’), which are available at and the selected administrative-dispute-resolution service provider's supplemental rules.”

In short, it is the terms and conditions for anyone attempting to register a domain name. This allows for complaints to be submitted without contest.

CONCLUSION

Cybersquatting has proved to be an unethical use of domain names for many reasons. It can be seen that many cybersquatters purchase domain names for themselves to either profit from it by selling the domain name at an inflated price to a trademark holder or to simply ruin the name of a company or person. Fortunately, there are laws in place that help take care of this, however unfortunately, they may not be so clear as to what may or may not be considered cybersquatting.

REFERENCES

Anti-Cybersquatting Piracy Act (ACPA). (n.d.). Retrieved April 11, 2015, from Berkman Center for Internet & Society at Harvard University:

Bloomberg News. (2008, December 24). Verizon Wins $33 Million in Suit Over Domain Names. Retrieved April 10, 2015, from The New York Times:

Dictionary.com, L. (2015). Dictionary.com: Cybersquatting. Retrieved April 10, 2015, from Dictionary.com: dictionary.reference.com/browse/cybersquatting

Draznin, H. (2014, March 2). Trump awarded damages in 'cybersquatting' case over domain names. Retrieved April 10, 2015, from CNN.com:

Hesseldahl, A. (2000, June 5). Legal Battle Being Waged Over Juliaroberts.com. Retrieved April 10, 2015, from Forbes:

Internet Corporation for Assigned Names and Numbers. (2014). Uniform Domain-Name Dispute-Resolution Policy. Retrieved April 11, 2015, from ICANN:

Kossler, M., Mazzullo, A., Salopek, E., Sides, C., & Taddy, S. (n.d.). Cybersquatting.

Krebs, B. (2007, November 28). Dell Takes Cybersquatters to Court. Retrieved April 10, 2015, from The Washington Post:

McCarthy, K. (2003, September 4). World's most notorious cybersquatter arrested. Retrieved April 11, 2015, from The Register:

Merriam-Webster, I. (2015). Retrieved April 12, 2015, from Merriam-Webster:

Roberts reclaims her domain name. (2000, June 2). Retrieved April 10, 2015, from The Guardian:

[1]Numbers one through four count against determination of bad faith, while the rest are weighed in favor or bad faith.