Cybersquatting: what is it and what legal measures can I take to combat it?

Cybersquatting is the registration, use or sale of a domain name with the intention of benefiting from a trademark owned by a third party.

As is well known, the principle that operates on the Internet is that of ‘first come, first served’, i.e. first come, first served. Hence, the acquisition or grabbing of domain names that are identical or similar to registered trademarks is possible.

The aim of cybercriminals is to take advantage of consumer confusion in order to carry out fraudulent actions through these domain names, as well as, among other cases, to coerce those who could be their legitimate owners to sell them at exorbitant prices.

There is no doubt that such actions are seriously damaging to the integrity, reputation and goodwill of companies and brands, as well as to consumers who will be under the false impression that they are buying products and/or services from a particular company when this is not the case.

What measures can be taken to prevent cybersquatting?

Given the obvious harm that this practice can cause,it is advisable to implement preventive measures to mitigate such risks, such as those detailed below:

• Proactive domain name registration: this consists of acquiring multiple variants or extensions of a domain name (e.g. .com, .net, .org) in order to protect the identity and rights of a brand in the digital environment.

This strategy helps to prevent cybersquatting, as well as serves to reinforce or increase the visibility of the brand in search engines.

• Domain name monitoring or surveillance: the implementation of monitoring services to track new registrations that may infringe the trademark or cause confusion. This measure allows for the identification and/or acquisition of domains that are relevant to a given entity.

What legal actions or remedies are available in case of infringement?

By pursuing a comprehensive strategy, you can provide a robust defence against domain name hijacking or hoarding.

However, in the event that such a practice is identified, what legal actions or avenues for resolution are available in the event of infringement?

Uniform Domain Name Dispute Resolution Policy (‘UDRP’).

The UDRP is an administrative procedure designed to resolve disputes between trademark holders and domain name registrants. It applies primarily to domains using ICANN’s registration system.

Such a complaint must be filed with the World Intellectual Property Organisation (‘WIPO’) and, if the procedure is successful, the transfer of the domain name to its rightful owner will be determined. In order to make use of the UDRP administrative procedure, the following requirements must be met:

• • The registered domain name is identical or confusingly similar to a registered trademark;
  • The holder of the fraudulently registered domain name has no rights or legitimate interests in respect of the domain name in question; and
  • The domain name that has been registered is being used in bad faith.

Resolution of ‘.ES’ domain name conflicts.

In Spain, this is managed through an out-of-court procedure administered by the public entity Red.es. This procedure is based on the rules established by the Domain Name Dispute Resolution Policy and allows the parties to resolve disputes without having to go to court.

Judicial.

Our legal system has regulated within the rights of the trademark owner the right to prohibit the use of its trademark as a domain name in Article 34.3.f) Law 17/2001, of 7 December, on Trademarks (hereinafter, ‘LM’).

In addition, Law 3/1991, of 10 January 1991, on Unfair Competition (‘LCD’) has articulated a series of precepts that could be applicable depending on the case. These could include the following: (i) acts of confusion between distinctive signs (art. 6 LCD); (ii) denigration or impairment of personal reputation in the market (art. 9 LCD); (iii) imitation of goods or services (art. 11 LCD); (iv) or all those acts of exploitation of another’s reputation by any means (art. 12 LCD).

Consequently, in the event of infringement, legal action could also be taken, given that the LM and LCD provide for these cases as infringement.

At Metricson we are specialists in the efficient and comprehensive protection and defence of domain names and trademarks, as well as in the filing of administrative and judicial proceedings to prevent their abusive use in the digital environment.

Article written by:

Estefanía Asensio

Intellectual property and data protection lawyer

estefania.asensio@metricson.com