• Trolls and Cybersquatters' Trademarks and Domain Names under Attack
  • January 16, 2009 | Authors: Christopher J. Borders; Kourtney A. Mulcahy
  • Law Firms: Hinshaw & Culbertson LLP - San Francisco Office; Hinshaw & Culbertson LLP - Chicago Office
  • Trolls may be cybersquatting on your trademarks or phishing off your company pier - should you be concerned?

    Cybersquatting - the registration of an Internet domain name that is identical to or similar to a registered or common law trademark - has been a problem as long as the commercial Internet has existed.

    Phishing - illegal use of a similar domain name or domain name incorporating a registered trademark to draw Internet traffic for, typically, fraudulent activities -- is a more egregious and costly theft of company customers and good will.

    There are a growing number of individuals and small companies – unaffectionately known as “trolls” - dedicated to registering domain names of recently filed trademark registrations they locate through trolling public lists of trademark registrations. Most trolls will focus on common mis-spellings or alternative spellings of a trademark, assuming that the registrant has registered only the exact trademark as a domain. Trolls either cybersquat the name until a transfer fee (i.e., ransom) is paid by the trademark owner to get it back, or force the trademark owner to file a cybersquatting proceeding. Even worse, phishing trolls will build a fraudulent mimicking website to steal customers.

    While the sheer number of mis-spellings and alternative spellings makes it impossible for a trademark owner to preemptively secure all domain names, every trademark owner should have a process in place to simultaneously register a reasonable number of domain names simultaneous with first use of new trademarks. Waiting to secure domain names until after the trademark is registered with the United States Patent and Trademark Office may be too late. Trolls find registrations from daily common use and are often sophisticated enough to make a domain name registration in a matter of hours of registrations becoming public. The cost of recovering a domain name registered by a troll far exceeds the cost of implementing an internal domain name registration process that will pre-empt most of these attacks on your company’s intellectual property, particularly with annual domain registration costs of as little as $9.00 per year.

    Cybersquatting has grown tremendously in the last two years according to Internet Corporation for Assigned Names and Numbers (ICAAAN) and the World Intellectual Property Organization. Thus, it is more important than ever that domain name registration be monitored and implemented consistently as with the company’s trademarks.