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Stolen Domain Names and Pornosquatting

tolen or poached trademarks are serious dangers to businesses who have taken advantage of the internet in order to advance their product and reach more customers. The danger lies in the consumer's faith in your trademark and copyrighted information, which can easily be shattered if they are rerouted to an obscene site when they intend to visit your own.

After such an event has occurred, you can successfully assert a domain name dispute complaint under the UDRP to show that the domain name in dispute is identical or confusingly similar to your trademark, that the respondent does not have a right or legitimate interest in the domain name, and that the respondent registered and used the domain name in bad faith.

One of the more common instances of domain name theft relates to pornosquatting. In its simplest form, pornosquatting occurs when your trademark is used as part of a domain name for a website containing pornographic material. In these cases, consumers intend to visit your own site, but finds themselves in site with a whole different purpose. However, despite what you may assume from the clauses of the UDRP, pornography alone may not be enough to show bad faith and have the domain name tranferred to you.

A classic case of "pornosquatting" will, however, suffice when standing before a UDRP panel. Pornosquatting has been held to be clear evidence of bad faith when: (1) a trademark the pornosquatter does not own is used; (2) the site to which the user is redirected is clearly pornographic; (3) the site is commercial, (i.e. you must pay in order to access further pornographic images); and (4) there is a "mouse-trapping effect" making it more difficult for the casual Internet user to leave the pornographic website.

In domain name disputes, especially those where pornosquatting has occurred, the most successful complaints, or defenses, know the law, work diligently to discover facts that may not be immediately evident, and communicate the party's best position to the UDRP panel. Of these facts, the history of the party's trademark and domain name are vital to proving your right to the domain in dispute. Further, being able to present exhibits to support the party's position are essential, and may include: USPTO trademark registrations; public recognition of the trademark; marketing and sales date; snapshots of the website content housed at the domain name at different intervals in time; testimonials; and many others. In the end, knowing your way around the proceedings and having the experience to know what works and what does not work when presented to the panel is priceless.
About the Author
Enrico Schaefer is the founding attorney of Traverse Legal, PLC, a high-tech law firm specializing in web law. You can find out more about protecting your domain name, UDRP arbitrations and anti-cybersquatting laws at Traverse Legal’s domain name theft and intellectual property and trademark blogs.