Cyber Law: Fighting cyber squatting crime

What is "cyber squatting"?

Cyber squatting is the act for someone to knowingly register under its own name a domain name which is already owned by another person as a trademark.

Such fraudulent act is essentially accomplished with the aim to compel the genuine owner of such name to purchase the fraudulent domain name from the cyber squatter at high price.

Most litigations occur when the unduly registered domain name is a prior and illustrious trademark; for example Guy Laroche, Lancome, Nike being registered by cyber squatters as "guylaroche.com", "lankom.- com" and "Nike.net" preventing accordingly the actual owners from legitimately using this domain name on the Internet to promote their genuine products.

Cyber squatting appears to be greatly facilitated by the fact that domain names are registered by companies or individuals based on the implementation of the rule "first come, first served", and that domain names accredited registering bodies ("registrars") do not perform searches among prior trademarks or names to locate prior identical or similar names owned by third parties which could represent a bar to such fraudulent registration.

Actually, the role of a registrar is and remains purely technical without any involvement in the legal background.

The European and U.S. courts have indeed confirmed this position in asserting that registrars are not liable for the registration of fraudulent domain names as they are not required to perform any prior searches to determine if such domain name application is valid for registration.

Such prior investigation remains the prerogative of the applicant; and therefore of the cyber squatter. We have to consider also that the lack of rules in tackling cyber squatting has significantly contributed in spreading this trend.

Indeed, a domain name applicant is not bound by any legal requirement as he is only committed under the Registration Agreement signed with the registrar to warrant that "to his knowledge the domain name to be registered under his own name doesn't infringe prior names, trademarks, and more generally doesn't violate third parties prior rights".

Moreover, domain name applicants are not requested to supply to the concerned registering bodies any official documents or certificate establishing their ownership on the domain name to register.

It should be specified that cyber squatting is a reprehensible act, and constitutes an "infringement" of prior rights (trademarks, copyrights, etc) whether the prior trademark is a famous one, or the products or services depicted under the litigious domain name are identical or similar to those covered by the prior trademark leading accordingly to confusion in the public mind between the genuine name and the fake one.

In the event of cyber squatting, you may as a complainant either file a suit before the civil courts on the ground of infringement, or file an action before the Icann accredited resolution bodies under the Uniform Domain Name Dispute Resolution Policy (the Icann is an International body, based in U.S., administering Internet protocols, domain names registration and other Internet related matters).

1) Legal action before the courts: This option (depending on the applicable national regulation) will allow you as complainant to obtain from the courts the withdrawal of the incriminated domain name (a), or the transfer of this domain name to you (b), and in any case the interruption of such unjustified use by the cyber squatter failing which the cyber squatter may be required to pay compensation damages to yourself.

2) Action before the Icann's accredited resolution bodies: It is interesting to note that among the four existing international bodies selected to resolve domain names disputes, the Mediation and Arbitration Centre of the WIPO (World Intellectual Property Organisation based in Geneva) has become the first body in settling such disputes on a worldwide basis (more than 3,000 disputes in 2001).

Opting for the Icann dispute resolution offers the advantage of a rapid, simple and low-cost process, but will only result in withdrawal or restitution of the litigious domain name to the real owner. Indeed, these International resolution bodies are not entitled to award compensation damages to the complainant.

Therefore, in order to be awarded compensation for the sustained damages, complainants may directly opt for a legal action before the courts.

In conclusion, although cyber squatting is a mounting phenomenon, more particularly in connection with the arrival of new (". info", ". biz", etc..) and upcoming generic domain names, we note that cyber squatters are nowadays subject to increasing successful legal actions and Icann settlement actions due to the heightened awareness of the legitimate owners, as well as the relevant international bodies and national courts against such malicious acts.