LAW 783-001 – Trademark Law and Practice
Cybersquatting is when one registers the domain name of another's distinctive mark with the bad faith intention to profit from it.
It requires that the person:
- has a bad faith intention to profit from the mark and
- registers or uses a domain name that is identical, confusingly similar, or dilutive of a distinctive mark.
Factors for bad faith intention to profit
Whether or not a person has a bad faith intention to profit is determined by balancing nine factors:
- His IP rights in the domain name
- The extent to which the domain name consists of his legal name or other common name
- His prior use of the domain name in connection with the bona fide offering of goods or services
- His bona fide noncommercial or fair use of the mark in a site at the domain name
- His intent to diver consumer from from the mark owner's site, either for commercial gain or to tarnish the mark by creating a likelihood of confusion
- His offer to transfer or sell the domain name for financial gain without using it in the bona fide offering of any goods or services, or a history or doing this
- His provision of false contact information which registering the domain name, failure to update it, or history of doing this
- His acquisition of multiple domain names identical or confusingly similar to marks of others
- The extent to which the mark is distinctive and famous