Some years ago, our Congress passed a law called the Anti-cybersquatting Consumer Protection Act. How does this affect the Webmaster in his everyday business?

Well we have all heard of cases where an enterprising Webmaster will register a well-known name or variation of such name and either place it for sale or use it to drive traffic to other sites. A well-known and infamous case is www.whitehouse.com. Personally, I think it was pretty ingenious and kind of humorous that this was registered and used as an adult site. I am sure that our former president logged on a time or two just for grins. Well we all know that corporations, big businesses, and celebrities do not have senses of humor and do not take lightly to a webmaster taking a name that they hold near and dear.

So soon after the cries of big business went through the halls of Congress a law was soon to be passed. Our Congress came up with this Consumer protection act for anti-cybersquatting and it has many effects on the webmaster.

For one, every time you register a domain name you must consider if the name is trademarked. If the webmaster does not think ahead he may find himself receiving a nasty lawyer letter threatening and saying the following:

1. You are committing cyber piracy
2. You are liable for damages
3. You will have to pay our attorneys fees
4. We will seek an injunction against you

The attorney will probably include the damages portion of the act to scare you:

SEC. 3. DAMAGES AND REMEDIES.

(a) Remedies in Cases of Domain Name Piracy.--

(1) Injunctions.--Section 34(a) of the Trademark Act of 1946 (15 U.S.C. 1116(a)) is amended in the first sentence by striking "section 43(a)" and inserting "section 43 (a), (c), or (d)".

(2) Damages.--Section 35(a) of the Trademark Act of 1946 (15 U.S.C. 1117(a)) is amended in the first sentence by inserting ", (c), or (d)" after "section 43 (a)".

(b) Statutory Damages.--Section 35 of the Trademark Act of 1946 (15 U.S.C. 1117) is amended by adding at the end the following:

"(d) In a case involving a violation of section 43(d)(1), the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than 100,000 and not more than 100,000 per domain name, as the court considers just.
The court may remit statutory damages in any case in which the court finds that an infringer believed and had reasonable grounds to believe that use of the domain name by the infringer was a fair or otherwise lawful use."

Well I titled this argument how to cybersquat and in order to tell you how to do such we will need to know what the main provisions of the act are:

The anti-cybersquatting consumer protection act amends the Trademark act of 1946 by adding an additional section to deal with these cyber pirates. The new provision in the act allows a trademark holder to sue persons who with "bad faith intent" to profit from a mark, registers, traffics in, or uses a domain name that, in the case of the domain name registration, is identical or confusingly similar to the registered mark. The act defines domain name and gives a definition to the term Internet.

Most webmasters I know will always say they did not register the name in bad faith and that they just wanted to make a few bucks or drive traffic. This is exactly what the act is designed to prevent. This new cyber squatting act is designed to protect corporate trademarks and give cyber piracy protection for individuals whose name is maliciously registered.

Again the act provides guidance and defines the term "bad faith" and gives nine factors to be considered:

In determining whether there is a bad-faith intent described under subparagraph, a court may consider factors such as, but not limited to--

"(i) the trademark or other intellectual property rights of the person, if any, in the domain name;
"(ii) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
"(iii) the person's prior lawful use, if any, of the domain name in connection with the bona fide offering of any goods or services;
"(iv) the person's lawful noncommercial or fair use of the mark in a site;
"(v) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site
"(vi) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services;
"(vii) the person's provision of material and misleading false contact information when applying for the registration of the domain name or the person's intentional failure to maintain accurate contact information;
"(viii) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to trademarks or service marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous trademarks or service marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of such persons;
"(ix) the person's history of offering to transfer, sell, or otherwise assign domain names incorporating marks of others to the mark owners or any third party for consideration without having used, or having an intent to use, the domain names in the bona fide offering of any goods and services;
"(x) the person's history of providing material and misleading false contact information when applying for the registration of other domain names which incorporate marks, or the person's history of using aliases in the registration of domain names which incorporate marks of others; and
"(xi) the extent to which the trademark or service mark incorporated in the person's domain name registration is distinctive and famous within the meaning of subsection (c)(1) of section 43 of the Trademark Act of 1946 (15 U.S.C. 1125).

So let's say you have your mind set that you are to cyber-squat. You decide that you are going to register www.MaccDonalds.com or www.brittanyspeers.com and send all of that traffic to your top site or sell the name for big bucks... you better slow down.

Recently I had to go through this entire process with a good client who had registered a variation of a name of a Fortune 500 corporation. He had worked for this corporation in the past and they had screwed him. He registered the name and soon the big bad corporation came a calling. I advised him that if he wanted to keep the name and make it worth more money he should do some of the following things:

Register the name as a trademark for another class of products. The big bad corporation registered its name for retail. I advised him that he might want to start a business under the name he registered for a product that was not like the big bad corporation. With this new business operating he could keep and use the domain name and would not be in "bad faith"

Well in the long run we decided it was not worth fighting and took the cash the big bad corporation offered. We decided it was not worth it because he would have to go to substantial time and spend substantial money to start and run a business to use the domain name.

So the moral of this story is if you are going to be a cybersquatting anti-consumer cyber pirate stealing everybody's names and souls you are probably going to have to use the name like a good corporate citizen to avoid getting hit with this new law from congress.