A couple of weeks ago when we’re discussing Prince’s estate trademarking the color purple, I mention the estate filing a lawsuit against for Domain Capital for cybersquatting. Long story short. Domain Capital loaned money to the previous owner of prince.com. (The previous owner was not Prince) The previous owner defaulted on their loan payments and Domain Capital took over the domain. It’s very interesting to note that the domain has been registered since 1995 and Prince in his lifetime never attempted to purchase the domain.Last week I learned that LL Cool J is bringing legal action against the founders of Rock the Bells music festival. He is suing them for trademark infringement, false designation of origin affiliation or association, cyber piracy and unfair competition. He is also requesting an injunction. Ladies Love Cool James has a lot of claims in his complaint but today we are going to focus on one. Cybersquatting.
Cybersquatting is the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit.
Listen and learn as Attorney Murray takes the mystery out of cybersquatting and provides practical steps to handle the situation.
Today's episode covers:
Resources and links mentioned in this episode:
About the Own Your Genius Podcast
The Own Your Genius podcast is the perfect mix of business, law, and mindset to help black entrepreneurs succeed in business and life.
Join Attorney LaConya Murray each month as she and guest share their entrepreneurial journey, tricks of the trade, and their secrets to getting out of their own way to succeed.
Inspired by her grandmother, the community bootlegger Attorney Murray‘s passion for helping entrepreneurs started early. Today she helps entrepreneurs throughout the country protect their brand, content, and ideas through trademarks, copyrights, and business development.
Until next week, keep building your business, growing your brand, and owning your genius!
Hey y’all what’s poppin you’re listening to The Legal Tea where we discuss what’s going on in pop culture from a legal view. I’m your host attorney LaConya Murray, owner of Off The Mark IP Solution, an intellectual property boutique that assists clients throughout the United States with trademarks, copyright, and patents. We have a good one for you today so let’s get started.
So, a couple weeks ago when we were discussing print to state trademarking the color purple, I mentioned that this state was filing a lawsuit against someone for cybersquatting. Well that someone was Domain Capital and long story short, Domain Capital loaned money to the previous owner of Prince.com. That previous owner was not Prince. That owner defaulted on their loan payments and Domain Capital took over the domain.
It’s very interesting to note that the domain has been registered since 1995 and that Prince in his lifetime never attempted to purchase the domain. Now last week I learned that LL Cool J is bringing legal action against the founders of the Rock the Bell Festival. The festival was pretty popular back in the early 2000s and ran from 2004 to 2013 and came to an end due to poor ticket sales and tax problems according to Billboard.com.
Now, last year, LL Cool J successfully put attention to cancel Rock the Bell’s trademarks that were associated with the festival on the grounds of abandonment, meaning that the festival, they were no longer using the trademarks. He went on to register his own marks for multiple goods and services. So, okay, the trademarks were canceled. He registered his own marks. So what’s the problem? Why are we here?
Well, Guerrilla Division, who is the founder of Rock the Bell Music Festival, they’re still using these marks in relation to websites and social media handles. And even though Elo reached out to them several times, he received no response. So he had no choice but to sue them. And he sued them for trademark infringement, false designation of origin, affiliation or association, cyber-privacy, unfair competition. And he’s also requesting an injunction.
Now Lady Love’s Cool James has a lot of claims on his complaint, but today we’re going to focus on just one of those, and that’s cybersquatting. Now if you are like me, you love buying domain names. If I think of a potential business venture, I’m going to make sure the domain name is available for that venture and go ahead and buy it as I flush out the details and decide whether or not I want to move forward or not.
Now that’s different from buying domain names for the sole purpose of sitting on them and waiting for the highs bidder. Cybersquatting is the practice of registering names, especially well-known companies or brand names, as internet domains in the hope of reselling them at a profit. This is really more of an issue in the beginning of the internet when businesses were really hesitant about establishing an online presence for their business. You know, everything used to be brick and mortar.
But you always have people who are looking for an easy way to come up. They purchase the domain on the low and they resell it for a few thousand dollars when those people decide to jump on the internet train and move their businesses online. Nowadays business owners typically check the availability of their brand names and their social don’t for the website and social media before they move forward.
However, that didn’t stop some people from trying to still come up. You have people that keep their ears to the ground, they keep an eye on what celebrities are doing and big well-known people are doing and really keeping paying attention to what the big trend is so they can purchase domain names in association and anticipation of that. Now cyber squad, you can tell if you are a victim of cyber squad if you go to the URL and it typically says something like domain for sale or not available. Or if you go there, you know, sometimes you go to a website and there’s a bunch of other ads on that website and those ads are really similar to that site that you’re looking for, that can be cybersquatting. Now I want you to keep in mind that just because somebody has your domain name doesn’t mean that they’re cybersquatting, okay? They can really have a real intent to use that domain for a legitimate purpose.
For real, like if the domain owner is providing a service or product that’s similar to yours, you may have a case of trademark infringement rather than cybersquatting. So you need to keep an eye on that and that’s why trademarks are important. The first thing you want to do if you suspect that someone is squatting on your domain, just contact them, reach out to them and you can use something like whois.net to find the owner if the information is not private.
After you talk to them, you find out what their intentions are and their response will dictate how you’re going to move forward. If the domain owner is looking for money, you really have three options, right? The first option is to what? Pay them. Um pay them. If the amount is reasonable and it’s going to resolve your problem quicker than litigation, it might just make sense to pay them the price. The second option is to sue them under the Anti-Cybersquatting Consumer Protection Act.
This act is federal law and therefore any lawsuit that you bring against a person is going to be in federal court. If you win, the squatting domain owner will be forced to transfer ownership and you might be awarded statutory damages in lieu of actual damages. Those damages range from $1,000 to $100,000 per domain name. To be successful, there must be a finding that the domain owner bought the domain in bad faith.
And this is how you find out if there’s bad faith involved. If there was no legitimate purpose for the domain name, two, if the owner’s intent was to create a site that can harm the trademark owner, three, the purchasing of storing multiple domain names that are the same or similar to other famous or well-known marks. And just the evidence.
Having all those domains names in the web itself can show bad faith. You don’t have to have an offer to sell Providing false or misleading information when you’re trying to register the mark trying to create association between you the domain and the rightful owner The more famous are well known the market is the more likely bad faith is going to be found So keep that in mind as you’re purchasing domain names the domain owner can overcome the determination of bad faith if he can prove that
She has any trademark and any other intellectual property interest in the domain name. Or if the domain name is like the legal or nickname of the domain owner. Or if you have prior use of the domain and in connection with goods or services. If you were actually using that name before you purchased the URL, that can be proof that there’s no bad faith. So in other words, there has to be a legitimate purpose for the domain purchase.
A lawful non-commercial are fair use of the mark in a website using the domain name. Now fair use includes comparative advertising, comment or criticism or even parody of another trademark. Create the domain for fair use. If you have a fair use purpose like we just talked about.
but your real intent is really to sell it, then that won’t overcome a finding of bad faith. Now, when you file your complaint with ICANN, ICANN is a nonprofit organization. That’s your third option. You can actually file a complaint with ICANN. They’re a nonprofit organization that really, they kind of monitor what’s going on with domain names and the internet. What they do, like in 1999, they decided to come up with this uniform domain name resolution policy.
And through this policies, parties actually elect to go resolve their issues or conflict through arbitration rather than litigation, which is court. Now with arbitration, there’s no trial, there’s no jury, there’s only a neutral person of persons who will listen to the evidence and make a decision whether or not they’re cybersquatting or not. Now most people are familiar with mediation where there’s a mediator that goes back and forth between the parties in an attempt to resolve the conflict. Which usually results in a compromise from both parties. Arbitration is not there. There’s no back and forth. Now to be successful in arbitration, you as a trademark owner, you have to show that the domain name is the same or similar confusing to your trademark. That’s the first thing. The second thing you have to show is that the domain owner has no legitimate purpose or interest in the domain name. And the third thing is that the domain name has been red-assured and is being used in bad faith.
Unlike suing under the Anti-Cybersquatting Consumer Protection Act, there is no monetary award if the trademark owner is successful. The domain name will just be cancelled or is going to be transferred to the trademark owner. Now, filing a complaint with ICANN often provides an easier, quicker resolution than actually bringing a lawsuit, which is why a lot of people choose to go that route. They either choose to just pay it. The money is not that big or not that expensive, they go ahead and choose to just pay, or they would choose to do arbitration because it’s quicker and it’s less expensive. Our three takeaways from today, we got a couple of takeaways from today’s podcast, and that is one, you have to be careful. I know there are a lot of people who like to hustle and keep their ear to the ground and see what’s gonna happen next. You have to be careful when you’re doing that, especially when you’re buying these domain names for the sole purpose of trying to come up, trying to resell them to the domain owner. Because you can find yourself on the other end of an anti-cyber-squatting lawsuit or arbitration, you know, through ICANN complaint. So be careful with that. Two, if one of the things, one of the common things that we heard through, as far as resolutions are concerned when it comes to filing a lawsuit or even arbitration is that, you know, we kept hearing this thing about trademark owner, owner, owner, owner.
This is one of the reasons why having a trademark, a registered trademark, is really important because this is going to be evidence when you go to court. You want to be able to prove that you are the rightful owner of this trademark and therefore have the authority to bring this cybersquatting suit. It’s also important to know that if someone is cybersquatting, depending on how they’re doing it, you might also have a claim for trademark infringement. So it all plays together. It’s not really just one or the other. You want to have all the protection that you can that you have because you want to have all the remedies. Cybersquatting if you bring along so we saw that the statutory damages range from anywhere from a thousand to a hundred thousand dollars per domain name right and then with trademark infringement you can either get actual damages or you can also get statutory damages. So you can get damages for if they violate cybersquatting that’s damages if they infringing your trademark, that’s damages. Okay, so you really want to take your intellectual property portfolio and you want to protect it, register it, and defend it. So that’s number two. Number three is… What would I say number three is? I would say that number three would be that before you go out shelling a whole lot of money out to anybody for defending anything, pick up the phone, send an email, and talk to the person on the other end because there could be a chance that it’s not cybersquatting at all. You know, maybe they have a legit purpose for buying domain name and it has nothing to do with you or your business. And a good example is Off the Mark. So we know that my law firm is Off the Mark IP Solutions. When I name my business, I look for Off the Mark. I’m going to just name it Off the Mark, right?
I had to add the IP solutions because the domain name for Off the Mark was already taken. But that domain name is a comic strip, right? I have no… I can’t stop him from using Off the Mark no more than he can stop me from using Off the Mark because he actually has a trademark for Off the Mark, but as it relates to comic strips. There’s no likelihood of confusion there. There’s no conflict there. So…
There’s no reason, I have no authority to say, hey, you’re cybersquatting because you have a domain name that I wanna use. Or you’re cybersquatting because your domain name is my trademark, so I have a trademark for Off the Mart. But he is for comics and I am for law. So there’s no conflict there. If somebody actually has a legitimate purpose for having that domain name that has nothing to do and is not conflicting with your good or service, you might just be out of luck.
You know, you might just be out of luck and it’s not cybersquatting. So keep that, keep that in mind. Okay. Listen, that’s all I have for you today. These things are so much fun. I really appreciate you guys listening to me and watching these podcasts. Do me a favor, subscribe. If you have not subscribed yet, make sure you subscribe to the podcast. If you have not left a review on iTunes or Google play or where else we at? We’re on tune in and we’re also on Stitcher.
If you have not left a review, do me a favor, do it. It takes like, I would say two seconds, but literally probably takes like a minute to do it. I really appreciate it. The feedback lets me know that you guys are enjoying what I’m putting out, that you find it useful, and gives me an idea of how we wanna move forward, okay? So remember, if you found today’s podcast informational, if you learned something, if it made you say, hmm, I didn’t know that, like it, subscribe, and share it with your friend.
Okay, until next time, take care.