There is a saying, “every man for himself and the devil take the hindmost!”
If we were in 1611, I would suppose the proverbial phrase took inspiration from cybersquatting. As it goes, cybersquatting has been absurdly rampant, leaving unsuspecting businesses and brand owners at awe with the numerous times they found out some troll beat them to the punch in registering a domain name identical to their trademarks or tradenames.
In a nutshell, cybersquatting is the unlawful act of registering a name, a brand, a trademark, or a tradename, as internet domains for the purpose of taking advantage of its goodwill and eventually profiting from the same. Internet domains or domain names, on the other hand, are simply web addresses which are used to identify a website because really, internet protocol (IP) addresses are virtually impossible to memorize. Come to think of it, you and your ingenious friends have this startup, a unicorn in the making, and just when you’ve decided to expand your business globally by putting up a website, you’ve discovered someone has already registered a web address identical or similar to your startup’s name.
Let me cite some examples.
In 2004, Microsoft sued a Canadian developer who registered the domain name <MikeCroweSoft.com>. The case was eventually settled and typing <mikecrowesoft.com> in your browser’s address bar today would lead you to the software giant’s official page. In 2006, Hollywood celebrity Tom Cruise had to institute an action before the domain name <tomcruise.com> was transferred to him. In 2009, the websites <jenniferlopez.org> and <jenniferlopez.net> bombarded Jennifer Lopez’s fans with ads and affiliate links convincing them to part with their hard-earned cash. Lopez had to file suit before the domains were returned to her foundation. And the list goes on.
In the Philippines, brands like Huawei, Instagram, Watsons, Marlboro, YouTube, Reebok, Skype and Facebook have resorted to arbitration in order that the .ph domain name containing said respective trademarks may be transferred to their lawful owners.
But what are the remedies available to trademark holders against cybersquatting?
To start off, there is no arguing that prevention is still better than cure, and such time old cliché equally applies to domain names. Proactively obtaining domain name registrations is still the better way to protect your trademarks against cybersquatting.
However, should the case be that someone has already secured a domain name identical to your trademarks, a trademark holder may take certain proceedings to enforce its rights. The Internet Corporation for Assigned Names and Numbers (ICANN) has adopted the implementation of the Uniform Rules of Dispute Resolution Policy (URDRP). The World Intellectual Property Organization (WIPO) also has an arbitration system to address domain name disputes. In cases where the domain extension involves the .ph, an aggrieved trademark owner may utilize the .PH Uniform Domain Name Dispute Resolution Policy (phDRP). In any case, the trademark owner must prove that (1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; (2) the illegal domain name registrant has no rights or legitimate interests in respect of the disputed domain name; and lastly, (3) the disputed domain name has been registered and is being used in bad faith.
The bottom line is, cybersquatting has a real and potent effect on your trademarks. However, being a victim of one should not cause a trademark holder to fret. Remedies are available and seeking expert advice is always the best option to iron out the wrinkle in such situations.