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The Worldwide Wild West: Defending Your Domain from Cybersquatters
“Cybersquatting”. This may be the first time you’ve heard this term, but it’s certainly not new. Back in the 90s, when the internet was still a novelty, Madonna.com was held hostage by Dan Parisi, a New York web developer. Ultimately, Madonna won because: (1) she’s Madonna, duh and (2) the World Intellectual Property Organization found, among other things, that the domain name was identical to existing registered trademarks owned by Madonna and that Parisi had no legitimate interests in the domain name.
Maybe Madonna can afford to spend thousands of dollars fighting Mr. Parisi over Madonna.com, but do you? Let’s talk about what cybersquatting is, how it happens, and how to limit the chances of it happening to you.
Cybersquatting: What is it?
There are people and entities out there who monitor trademark activity on the USPTO’s website, and may very well be monitoring queries placed on popular domain websites and hosting sites to see what domains someone may be interested in. Then, they buy those domains (Parisi allegedly bought the Madonna.com domain name from its previous owner for about $20,000), and wait. What are they waiting for? For you to want it, and want it so badly that you’re willing to pay a pretty penny for it. Maybe while they wait, knowing that they’ll get high traffic (i.e., Madonna.com), they make some money off of advertisements too. Or worse, maybe they put scandalous stuff on their website to tarnish your reputation, pushing you to act and spend that money.
So, what can you do to prevent it? Act quickly, strategically, and proactively. Yes, you can sue, but we’d rather not have it get to that point.
Limiting the Risk of Cybersquatting
Before investing time and money into filing a trademark application, make sure to secure the corresponding domain name. Domain names are relatively inexpensive, but they are often the first thing up for grabs. Pro tip: might as well grab those social media handles as well.
For example, once you’ve checked that a name is legally available (meaning it’s not already subject to someone else’s trademark or creating obvious conflicts), and you’ve decided that’s the brand you want to move forward with long-term, lock down the domain immediately. Waiting until after you file your trademark application, after you announce your brand, or waiting too long after you first checked if it was actually available, increases the risk that someone monitoring filings, business registrations, or new brand launches will purchase the domain name before you do.
Unfortunately, there are entire industries built around cybersquatting. By registering the domain name early, you’re taking a relatively inexpensive step that can prevent costly disputes, ransom demands, or delays in launching your business.
To sum it up: clear the name legally, secure the domain, and then proceed with your trademark application. This way, your legal rights and your online presence are aligned, and you won’t find yourself in a frustrating position of owning a trademark but not the domain name, rendering the trademark ineffective if it can’t even be used in the online marketplace.
If the concept of a cybersquatter is freaking you out, don’t stress, because as always, if you’ve got questions, you know we’ve got answers!
~ The W + K Team
ABOUT WEINSTEIN + KLEIN P.C.
Founded in 2019, Weinstein + Klein is a modern boutique law firm that serves as outside general counsel to businesses across industries. Weinstein + Klein provides strategic, day-to-day legal support with a focus on labor and employment law, corporate and transactional matters, and business litigation. Weinstein + Klein works closely with business owners, executives, and entrepreneurs to proactively manage risk, navigate complex employment issues, and handle key transactions – from formation to funding to exit.