Initiating an anticybersquatting case: some practical considerations

Cybersquatting is the practice of registering domain names incorporating trademarks and famous names for the purpose of holding them hostage if the mark holder or famous person wants to use the mark or name for their own domain names. The Anticybersquatting Protection Act of 1999 (ACPA) helps mark owners obtain jurisdiction to stop cybersquatting with provisions creating in rem jurisdiction over the domain name when the plaintiff cannot find a proper defendant over whom personal jurisdiction can be had. One element of an ACPA action for damages is showing that the domain name in issue is identical to or confusingly similar to a distinctive mark or famous mark. Counsel should find some registrant information that will allow it to identify and try to contact the infringing registrant. Counsel should first send cease-and-desist letters explaining the client's rights and demanding cessation of the infringing use of the client's marks and transfer of the domain name.