LAW 783-001 – Trademark Law and Practice

Cybersquatting


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:

  1. has a bad faith intention to profit from the mark and
  2. 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:

  1. His IP rights in the domain name
  2. The extent to which the domain name consists of his legal name or other common name
  3. His prior use of the domain name in connection with the bona fide offering of goods or services
  4. His bona fide noncommercial or fair use of the mark in a site at the domain name
  5. 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
  6. 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
  7. His provision of false contact information which registering the domain name, failure to update it, or history of doing this
  8. His acquisition of multiple domain names identical or confusingly similar to marks of others
  9. The extent to which the mark is distinctive and famous