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How to Defend Against a Cybersquatting Claim

24th June, 2021

Posted by ESQwire

UDRP proceedings often arise in cybersquatting claim cases when a bad actor has registered and used a domain in bad faith, putting the trademark owner at risk of harm. However, there are also many situations in which a business and legitimate domain name registrants will need to work with an experienced UDRP lawyer to defend against cybersquatting allegations in a UDRP complaint. The Uniform Domain Name Dispute Resolution Policy (UDRP) allows parties to file complaints in order to resolve cybersquatting disputes in a quicker and more cost-effective fashion than filing a lawsuit under the Anticybersquatting Consumer Protection Act or the Lanham Act.

If you are served with a complaint, what are your options for defending against cybersquatting allegations? An experienced domain name attorney can speak with you in more detail about defenses that may be available based on the particular facts of your case, but in the meantime, the following are some potential defenses to a cybersquatting claim.

Proving the Complainant Does Not Have a Valid Trademark

One of the first ways to defend against a cybersquatting claim is to show that the complainant does not have a valid trademark. Accordingly, if the complainant does not have a valid trademark, then the cybersquatting claim should fail.   There are differences between registered and common law trademark rights that could change the outcome of the analysis.  A domain attorney can speak with you about the validity of trademarks and how to build this type of defense strategy. 

Prove the Registration or Use Was Not Done in Bad Faith

In order to succeed in a UDRP complaint, the complainant needs to prove that the domain was registered and used in bad faith. More specifically, according to the Harvard University Center for Internet & Society the UDRP requires that, “to prevail in a domain name dispute under the UDRP, the complainant must prove that the disputed domain name has been registered and is being used in bad faith.” To be clear, in order to win a UDRP complaint, the complainant needs to prove both that you registered the domain in bad faith, and that you used it in bad faith. You may be able to rebut allegations of bad faith by showing some of the following:

  • You did not register the domain with the intention of selling it back to the complainant for more money than you paid for it;
  • You did not register the domain to stop the complainant from using it for business purposes, based on the complainant’s trademark;
  • You did not register the domain with the intention of disrupting the complainant’s business; or
  • You did not attempt to confuse visitors to the site about whether or not they were visiting a site owned and run by the complainant.

One of the ways you may be able to show that the registration and/or use of the domain was not done in bad faith is by proving that you had a legitimate interest in using the domain.   All of these issues are fact specific, meaning the facts and circumstances will differ from case to case and success in a defense often is determined on how the evidence is presented.

Contact a Domain Name Attorney

If you need assistance defending against cybersquatting claims, a dedicated domain name lawyer at our firm can discuss the particular facts of your case with you today and strategies for defending against these allegations. Contact ESQwire to learn more.

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