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A trademark owner who finds a domain name that is identical or confusingly similar to its mark has several options for dealing with the possible infringement. The owner of an unregistered or common law mark can act against a cybersquatter and seize an infringing domain name.
In my previous article, 6 Ways to Recover a Domain Name from an Infringing Cybersquatter, I provide six ways you can deal with trademark infringement. In this article article I go a little deeper, providing a sample cease-and-desist letter that you might find useful when dealing with trademark infringement of a domain name.
CERTIFIED MAIL
RETURN RECEIPT REQUESTED
[name of registrant of domain name]
Attn: [name of administrative contact]
[address of registrant]
[name of registrant of domain name]
c/o [name of registrant’s statutory agent]
[address of statutory agent]
Re: [name of mark owner], v. [name of registrant]
To Whom It May Concern:
[name of mark owner] (“[abbreviation of mark owner]”) is the owner of United States Federal Trademark Registration(s) No. [insert USPTO registration number of all applicable marks] and *numerous other trademark registrations pertaining to the mark. [abbreviation of mark owner] uses this mark in the United States in conjunction with [add description of how the mark is used in connection with goods and/or services]. [abbreviation of mark owner]’s federal registration has been in full effect for over [insert number of years since mark was registered] years. A copy of the federal trademark registration data is attached for your reference as Exhibit A. [abbreviation of mark owner] owns the domain name [insert the domain name of mark owner that is the subject of the infringement], which is an operating commercial website.
[abbreviation of mark owner] recently discovered that [insert name of registrant/cybersquatter] (“[abbreviation of cybersquatter]”) has registered and is using www.[insert infringing domain names] (collectively the “Domain Name”) as a World Wide Web domain name in violation of the Anticybersquatting Consumer Protection Act of 1999, which is embodied in the Lanham Act. You can find the ACPA at https://www4.law.cornell.edu/uscode/15/1129.html. Furthermore, [abbreviation of cybersquatter] is intentionally trading on the goodwill of [abbreviation of mark owner] by using a trademark that is confusingly similar to [insert applicable trademark(s)].
It is clear that [abbreviation of cybersquatter]’s use of the Domain Name is intended to (and actually does) confuse and misdirect customers seeking [abbreviation of mark owner]’s website to [abbreviation of cybersquatter]’s website, while ensuring that [abbreviation of cybersquatter]’s customers are not confused. This activity is actionable under federal law and causes [abbreviation of cybersquatter] to be liable to [abbreviation of mark owner] in every state in which [abbreviation of cybersquatter] has made sales. [abbreviation of cybersquatter]’s activities are unlawful and constitute unfair competition, intentional trademark infringement, trademark dilution, false designation of origin and cybersquatting.
The Lanham Act provides numerous remedies for trademark infringement and dilution, including, but not limited to, preliminary and permanent injunctive relief, money damages, a defendant’s profits, provisions for the destruction or confiscation of infringing products and promotional materials, and where intentional infringement is shown (as would be the case here), attorneys’ fees and possible treble money damages.
[abbreviation of mark owner] has several options to enforce its legal rights. It can submit the matter to the Internet Corporation for Assigned Names and Numbers to be resolved under its Uniform Domain Name Dispute Resolution Policy (the “Policy”) and seek a ruling that the Domain Name be transferred to [abbreviation of mark owner]. The Policy can be found at https://www.icann.org/udrp/udrp-policy-24oct99.htm.
Second, [abbreviation of mark owner] can file a lawsuit against [abbreviation of cybersquatter] seeking: (i) preliminary and permanent injunctions, (ii) money damages, (iii) compensation equal to [abbreviation of cybersquatter]’s profits, (iv) reimbursement for [abbreviation of mark owner]’s attorney’s fees (because of [abbreviation of cybersquatter]’s blatant and intentional acts), and (v) a court order that [abbreviation of cybersquatter] transfer the Domain Name to [abbreviation of mark owner] and that [abbreviation of cybersquatter] compensate [abbreviation of mark owner] for damage to [abbreviation of mark owner]’s goodwill.
[abbreviation of mark owner] prefers to resolve this matter without taking legal action, but it is prepared to file a lawsuit if necessary to protect its rights and business. [abbreviation of cybersquatter] may avoid legal action by having an authorized representative of [abbreviation of cybersquatter] sign this letter where indicated below and return the signed letter to me on or before [insert deadline for response], 2001.
This letter is sent without prejudice to [abbreviation of mark owner]’s rights and claims, all of which are expressly reserved. I am sending you a copy of this letter by regular first class mail in case you refuse to accept the certified mail, return receipt requested version of this letter.
[insert signature block for mark owner & signer]
cc: [insert name of your lawyer], Attorney
The undersigned covenants to take the following actions immediately: (i) transfer any and all rights of the undersigned in and to the following domain names to [name of mark owner]: [insert all domain names to be transferred] (collectively the “Domain Name”); and (ii) cease and desist from any and all use of the Domain Name.
Dated: __________________.
[insert name of registrant/cybersquatter]
By:_________________________
Its:_________________________
Domain Name Cease-and-Desist Letter Notes
- Obtain the name of the registrant, administrative contact, and billing contact for the domain name by doing a whois search. You should also address and send the letter to the billing contact for the domain name.
- Attach a copy of the registration information for each mark to the letter as Exhibit A to the cease-and-desist letter. You can obtain the trademark and service mark registration information from the United States Patent & Trademark Office web site. Look up your mark(s), print the detailed information about the mark and attach it to the cease-and-desist letter as Exhibit A.
- This letter, if signed and honored by the cybersquatter, will allow you to obtain the infringing domain name(s), but it does not resolve your damage and other claims, if any. You should consult with an attorney to discuss potential claims and remedies and whether you should pursue litigation if you want more than the infringing domain names. Follow up and make sure the domain names are transferred.
- Send a copy of the letter to each addressee in case any of them refuses to accept delivery of the Return Receipt Requested letter.
- If your demands are ignored, you must decide whether to do nothing about the infringement or contact your lawyer and take legal action.
- Consider whether to have a lawyer send the cease-and-desist letter. The letter usually has more impact when it comes from a lawyer.
[Photo credit: H.L.I.T.]
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Hello Charles thanks for this precious article.
I need to ask you a question in a reverse fashion :)
Can a cease and desist letter be only made up of one single text line telling: “We would like you to stop using this domain immediately” ? Would it still hold the same legal validity of a proper cease and desist letter?
Thanks a lot.
As parking domains for “clicks” is getting less profitable, more and more of these typo domainers are getting into affiliate marketing – sending “stolen” traffic back to the brand.
If you know who they are, you don’t need to fuss about getting the domain as it’s basically worthless to you. Just figure out who the affiliate is and stop paying their commissions.
It’s a process of ongoing monitoring after that, as domains never seem to “die”.
-Peter
Actually, the fact that there are so many companies that could complain is good (not conclusive) evidence that your domain is generic. It also poses an opportunity for negotitating with both.
If you wish to contact me off-line to discuss the specifics, I believe you can do that through my profile.
What happens if a domain name owner gets two C&D letters from two different companies on the same domain and they are both asking for the same domain?
I have a generic url, (so I thought) but two different companies with the same first name are claiming it.
Also, upon getting the C&D letters and following the C&D letter (which is word for word the one above), I did search the USPTO website, there are five others companies that could also stake a claim.
I have informed them that the URL is not going to be renewed and will be dropped from registration (in 90 days), and I do not want to “Transfer” the url to the wrong party.
Any thoughts?
Wow, very interesting for your first post shown in domaining.com, if you should continue offering templates like this one I have the feeling I an gonna be a fan of this blog!