Florida Trademark Claims and How to Combat Cybersquatting or Cyberpiracy
Cybersquatting or cyberpiracy is when someone registers a domain containing your name or that of your business and does it to deprive you of the ability to register that domain. There are several ways to deal with this hijacking from contacting the domain registrant and notifying search engines to alerting the FTC and FCC in the federal government and filing a lawsuit. But a more proactive approach is to purchase domains and register trademarks for your business.
What exactly is cybersquatting and cyberpiracy
Before examining what you can do in response to cybersquatting or cyberpiracy it is important to define and understand the terms that impact situations where someone uses your name or that of your business in a web domain.
A domain is an address on the internet. A website is what we see on our screen when we reach a domain but it is different from the domain. A domain may host a website or a website may reside on a domain. But that is not necessary or required because a domain can also point to another domain to direct traffic to the second domain. So the domain is like a street address and the website is the house you may find at that address but there does not always have to be a house at the address and might be a sign that sends you to another address where the house is located. The Anti-Cyberpiracy Act is focused on domains not on websites.
What does the Anti-Cybersquatting Consumer Protection Act do?
In the earlier days of the internet in 1999, Congress passed the Anti-Cybersquatting Consumer Protection Act. The Act is part of the federal trademark law commonly called the Lanham Act and is found at Title 15 Section 1125(d) of the US Code. It is a civil law and is formally titled Cyberpiracy Prevention. Congress enacted the law to promote online commerce and prohibit bad faith and abusive registration of domain names. So the purpose of the Act was essentially to remedy when someone registers a domain to intentionally deprive another from using that domain.
The Anti-Cybersquatting Act provides for in personam and in rem actions. This meaning that you can either sue the registrant of the offending domain which is in personam or if you cannot determine the identity of that person you can sue over the domain itself as if it was a piece of property like a house or a boat which is the in rem action. In personam and in rem actions deal with how a court obtains jurisdiction in a case so it has the power to act under due process requirements.
How does federal law interpret and react to cyberpiracy or cybersquatting
The key concept behind cybersquatting and cyberpiracy is not the registration of the domain but doing so in bad faith. The ACPA defines bad faith as the intent to divert consumers from the trademark owner’s online location. Bad faith intent is also characterized as one designed to harm the goodwill or tarnish or disparage the mark by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.
What this means is that when someone registers a domain containing the name of someone else or their trademark the registrant runs afoul of the Anti-Cybersquatting law if their intent is to prevent the first party from owning or using the domain or to harm the trademark owner in some manner.
Important cases decided under the ACPA
Cyberpiracy is the same as cybersquatting. In the early days of the internet back in 1996 the plaintiff in the federal Panavision case found at 945 F. Supp 1296 (C.D. Cal. 1996) held the trademark of Panavision and sued the defendant who had registered the domain of Panavision and tried to sell it to Panavision for $13,000. The court sided with Panavision that this was cyberpiracy and noted that the defendant had also registered domains for Air Canada and Delta Airlines with the intent of holding those for ransom from those airlines.
Similarly in the 2010 DSPT case at 624 F.3d 1213 (9th Cir. 2010) the court upheld the jury’s verdict that registering a domain using the name of the defendant’s former employer was cybersquatting even though that company only a had common law trademark for its own name.
Remedies under the ACPA
The remedies available under the ACPA at 15 U.S.C. Section 1114(2)(D) are primarily injunctive relief but in certain cases can also include monetary damages and attorney’s fees. If the domain registrant is shown to have a bad faith intent in maintaining the offending domain then that party can be held liable beyond an injunction. Equally so if the domain registrant entity is notified of the infringement and suspends, disables, or transfers the domain then that party can pursue the person who registered the domain for its monetary damages and attorney’s fees.
Is there a Florida law equivalent to the federal Cybersquatting law
Not exactly. Florida does have a trademark law located in Chapter 495 of the Florida Statutes but that Chapter does not specifically address internet domains. This is because the internet crosses state lines so regulation of the internet lies primarily with the federal government.
Florida’s trademark laws have not yet been used in a reported cyberpiracy or cybersquatting civil case meaning that no appellate court had reviewed any trial court rulings on such a case and rendered a written opinion on it. However under Section 495.012(1)(d) of the Florida Statutes it is illegal to register a trademark containing the name of another person without that person’s consent. So extrapolating a bit on that concept it stands to reason that a person or business may also not use the name of another person or business if it is not also their name in a domain that advertises to Floridians. Doing so would infringe on the mark of the other person or business.
Should you file a Florida trademark claim too?
In evaluating the claims that can be brought in a business lawsuit, if it is used at all, Florida’s trademark law may simply serve as a support for a federal cybersquatting claim because the Florida version does not specifically address cyberpiracy like its federal counterpart. The remedies offered under Section 495.141 though allow for injunctions and disgorgement of ill-gotten gains in the form of the profits earned by the defendant. Florida’s trademark law also gives the court the ability to award up to three times the actual damages in its discretion as compensation and to award attorney's fees to the prevailing party. So adding this claim in a cybersquatting case requires a careful assessment with your business lawyer to determine whether the situation supports the claim and whether the damages may be distinct from the federal claim.
What can you do in response to cyberpiracy or cybersquatting
You can always file a lawsuit within the statute of limitations period. But before doing that you might consider these alternatives that may remedy the situation.
1. Contact the domain registrant
The domain registrant is the person or business that registered the domain. You can generally find this information easily on websites like Who Is or search using a search engine for the identity of the domain registrant. Often the domain registration information contains a method to contact the registrant. That party may be a conduit for the actual wrongdoer or may be the actual party that purchased the domain. The registrant may not be aware of your trademark and may be willing to cancel the registration, sell, or even turn over the domain to you.
What you must bear in mind is that it is not illegal to register a domain in that the simple act of registering the domain does not by itself violate the Anti-Cybersquatting Consumer Protection Act. The registration must be accompanied by bad faith to qualify as cyberpiracy. So when you contact the domain registrant you should address this element by inquiring as to the purpose that the registrant had in registering the domain if the registrant contends that they have a right to own and use the domain.
2. Notify search engines
Another response option either by itself or together with contacting the domain registrant is to alert search engines like Google to the cybersquatting violation. The search engine may have its own prohibitions against this type of conduct and its own reporting criteria or reporting forms. So it is appropriate to research on the search engine as to how to report this type of conduct.
Reporting bad faith domain registration or usage may inform the search engine about the conduct but it may not provide a remedy without more. So when researching the method by which you can alert the search engine to this conduct you should also review what the search engine says it will or can do in response to the offending domain. If the search engine does not have any published protocol then consider asking the search engine to remove the offending domain from searches by de-listing it or de-indexing the domain. That will leave the domain registered but it will not appear in searches on that search engine.
3. Alert the Federal FTC and FCC
The Federal Trade Commission and the Federal Communications Commission have some oversight over domains, websites, and the internet. Those agencies have reporting methods online for informing them about cyberpiracy and cybersquatting.
Because the Act is civil and is part of the larger trademark laws it is unlikely that either of those agencies will undertake any action on your behalf but they do collect the information and it may be beneficial later. Given that there is no cost to report cybersquatting to these agencies it is an action to consider in your response to the conduct and should be an option you discuss with your business lawyer.
4. File a lawsuit
In addition to the options identified above you can file a lawsuit against the domain registrant for violating the Act. In addition to proving the registration you must prove your claim to the domain name and the bad faith of the registrant in registering that domain. The Act itself provides for a range of remedies that you should discuss with an intellectual property litigator or business litigation attorney that tries trademark and intellectual property cases.
The factors to evaluate in whether to bring a lawsuit and how to structure the claim along with what other legal claims to bring are too numerous and too broad to address in this article. But one factor may be the actual impact of the offending domain balanced against the impact that the lawsuit may have on you or your business.
Proactive alternatives to reacting to cyberpiracy
These are some alternatives that you can undertake to deter someone from stealing your personal name or your business name and using that in an internet domain in violation of anti-cybersquatting laws. These options are not an exclusive list and you should discuss all options with your business lawyer and your IT professional.
Register your own domains
In some cases you may learn of cyberpiracy and have no option but to react but it may be possible to limit these instances by registering your own domains to prevent others from being able to register and hold those hostage from you later. Also trademarking your business name, logo, and other phrases may place you and your business in a better position to prevail on cybersquatting claims if you later have to bring those in a lawsuit or persuade a search engine to de-list an offending domain.
If you own your business name or professional name you can register those as domains as long as others have not done so first. Registering variations of your business name, protected name, or catch phrase may also make it less likely that cyberpirates will target your business and hijack domains using those. The balancing act that your business should evaluate is the cost of registering and maintaining all those domains versus the benefit to be obtained from them. It may be difficult to identify and register every possible option but even registering a few may make it more difficult for your business to become a target of opportunity for cyberthieves.
Trademark your business logo and catch phrases
If you use your business name in commerce then you likely have a common law trademark on that name. However many businesses use fictitious names or catch phrases to identify and market themselves more effectively. These other names and phrases can be trademarked in most cases either in Florida or federally or both depending on the requirements of your business. To learn how to trademark your business logo in Florida please refer to my article on that topic.
Trademarks do not prevent someone else from using the name or catch phrase but they are intended to provide a more efficient mechanism by which to bring a stop that infringing conduct. For their cost trademarks make good business sense to both protect the business as well as to enhance its value.
Trademarking the fictitious name of your business or its catch phrase will not prevent a cyberthief from registering a domain with that name or phrase in bad faith if you have not already done so but it will make it easier for you to show that you are the owner of a protected mark that is worthy of protection. That can later make it easier for you to remedy cyberpiracy or cybersquatting should you become the unfortunate victim of such an act.
While it may not be possible to prevent cybersquatting or cyberpiracy given the ease with which one can register a domain there are proactive actions and responses that you and your business can take other than filing a lawsuit that you should consider.
In the final analysis your business must balance the impact of these malicious acts against the costs to combat or remedy them in evaluating with your attorney whether any action is warranted in response to bad acts that qualify as cyberpiracy or cybersquatting.