Seizure or theft of a domain name (cybersquatting) is a situation in which a certain entity purchases a domain name that is identified with another entity and then tries to profit from the domain name it purchased by selling the domain name back to the entity identified with the domain name (sometimes the same entity is the owner of a trademark the trade is similar) or by using the domain name in a misleading way for the purpose of diverting customers from the owner of the trademark to the registered entity of the domain name.
For example, theft of a domain name can be characterized by a situation in which a certain person (who has no connection to the Coca-Cola Company) purchases the domain name coca-cola-israel.co.il and creates a site for the sale of beverages under this domain name, or if he turns to the Coca-Cola Company and offers to purchase from him the domain name which he “grabbed”.
It will be clarified that stealing a domain name is a different action from domain hijacking – an attack action in which the domain name of a certain party is stolen by another party (reference to these actions is in another article we wrote on the subject).
In this article we will examine what domain name theft is and what can be done to return a captured domain name.
What is domain name theft?
Domain name theft is a situation of registering domain names that are identified with another entity or if they are identical or similar to another entity’s trademarks, without the permission of the entity identified with the domain name, with the intention of selling them to their owners at a high price or benefiting from their reputation in a deceptive manner.
There are two common types of domain name theft:
Typo squatting – this is one of the most common types of domain name theft. In this type, the domain grabber intentionally buys domain names that are misspelled. The idea is to build a fake website that surfers will visit when they make typos. The most common application of typo squatting is displaying advertising links on the same topic as the target brand.
Domain grabbing – this is one of the most typical forms of domain name theft. In this way, the vacant domain name is registered in order to sell it to its legitimate owner.
How can I get control of a stolen domain name?
When domain names are stolen, there are several actions that can be taken to gain control of the fraudulent domain name.
ACPA procedure in the United States
A person or company based in the United States can file a claim under the provisions of the ACPA. However, this procedure is only effective if the owner can prove his ownership of the trademark, that the domain name is the same or similar to his brand name, and that the person who registered the domain name is trying to profit from the reputation of the original owner.
WIPO Arbitration and Conciliation Center – The UDRP Procedure
The WIPO Arbitration and Mediation Center provides time- and cost-effective mechanisms to resolve domain name disputes without the need for litigation. This service includes the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP).
The UDRP procedure applies to the following TLD registries: aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, . net, .org, .pro, .tel The UDRP also applies to all new TLDs.
IL-DRP procedure in Israel
(The information is taken from the official website of the Israeli Internet Association)
In addition to the UDRP procedure, there is an alternative dispute resolution procedure designed to provide a quick response to disputes concerning the allocation of domain names under the suffixes of the State of Israel (“IL”) – IL-DRP.
The IL-DRP is not intended to replace the legal system. As part of the IL-DRP proceedings, only claims of a third party disputing the assignment of an existing domain name to its registered holder will be discussed.
There are four cumulative conditions for holding the IL-DRP procedure:
A. The domain name is identical or deceptively similar to a trademark, trade name, registered corporate name or registered name of a legal entity of the complainant;
B. The complainant has rights in the registered name;
C. The holder has no rights in the registered name;
D. The submission of the application for the allocation of a domain name was made in bad faith or the domain name was used in bad faith.
Procedure:
Filing a petition – a petition to clarify the dispute must be submitted to the email address of the Israeli Internet Association (appeal@isoc.org.il), which will include all the materials and claims that will allow the arbitrator or the IL-DRP panel to decide the dispute.
The following details must be included in the petition:
A. The parties’ full names, addresses, telephone numbers, email addresses or any other means of communication.
B. The description of the matter in dispute, including an explicit reference to each of the four cumulative conditions for holding the procedure.
C. Payment of procedure fees.
All information transmitted by email and the documents attached to the petition will be transmitted in the Hebrew language. The judge or panel may order the complete or partial translation of the documents in any language into English or Hebrew.
Freezing the registration status of a domain name during the IL-DRP procedure – after submitting the petition and paying the procedure fees, it will not be possible to transfer the rights of ownership of the disputed domain name or delete its registration from the registry until the end of the procedure. Also, it will not be possible to make any changes to the registration details of the domain name holder or the registered contacts of the domain name. The domain name will continue to be active until the end of the dispute.
Appointing a judge / composition – The Israeli Internet Association will appoint an expert who will act as a judge. Each of the parties may request that the dispute be heard by a panel of three judges. The party requesting the extension is required to pay additional procedural fees for the additional judges together with the submission of the request for a hearing before the panel. If the party requesting the extended hearing is the complainant, the request for the extended hearing shall be submitted together with the petition or no later than seven days from the filing of the petition. If the party requesting the extended hearing is the holder, the request for an extended hearing will be attached to the holder’s response to the petition.
Notice to the holder and the holder’s response – after the appointment of the judge or panel, copies of the petition and the materials attached to it will be sent to the holder by email. The judge or panel may decide to send a notice to the holder by other means other than email. The holder may submit an answer to the petition, as well as any additional relevant material, within 15 days from the date the petition was sent to him.
Additional information – the judge or panel may ask the parties to provide additional material relevant to making a decision on the dispute.
The decision of the judge/panel – in the case of the panel, the decision will be made by a majority of its members. The arbitrator or panel will make reasonable efforts to reach a decision in the dispute within 21 days of receiving the holder’s answer or receiving the additional information, and will send their reasoned decision to the parties by email.
Appeal to judicial courts
The courts also have the authority to discuss procedures for returning a domain name to its owner. Going to court is usually recommended in a situation where DRP procedures cannot provide an efficient and quick solution to the problem.
Famous examples of domain name theft
The case of Tom Cruise
In 2006, actor Tom Cruise filed a petition with WIPO against a man named Jeff Burger, who had owned the domain name TomCruise.com for over 10 years. The domain name directed the surfers to his website – Celebrity1000.com, which earned through third-party advertisements. Jeff Burger was known as a notorious domain name thief (cybersquatter), and many petitions were filed against him at WIPO.
Tom Cruise’s lawyers made three main claims:
1. Tom Cruise has common law trademark and service mark rights (“”common law trademark and service mark rights”) in his name – “Tom Cruise”.
2. Burger has profited from using the domain name through third party advertisements.
3. Internet surfers probably thought that Tom Cruise was personally connected to the website com.
On the other hand, Jeff Burger made the following claims:
1. .com was a fan site where the actor’s biography highlights this aspect.
2. Burger’s use of the domain name should be protected under the right to freedom of expression.
3. When people typed in the com address they didn’t expect to see the actor endorsing the site. They wanted information about the actor, which the website Celebrity1000.com told at the redirected URL.
4. Cruise did not take any action for 10 years, so he agreed by behavior that Burger would own the domain name.
Finally, Tom Cruise was able to regain ownership of the domain name.
The case of Donald Trump
The TRUMP trademark is a registered distinctive trademark of the name of Donald Trump. In 2007, Web-adivso registered the names TrumpIndia, TrumpBeijing, TrumpAbuDhabi and TrumpMumbai as top-level domains (LTDs) with the suffix “com”.
In the same year that the sites were registered, the Trump Organization announced its plans to build hotels under the TRUMP brand in Bangalore and Mumbai, India. The sites parodied Trump, and their content was related to his programs.
Towards the end of 2010, Trump’s lawyers asked the company to remove the sites and pay Trump $100,000 in compensation for each of the domain names, claiming that they caused damage to Trump. After the company refused these demands, Trump turned to the WIPO Arbitration and Conciliation Center, claiming that his trademark had been infringed.
Trump’s lawyers were able to prove their claims, and it was determined that the company would transfer the four domain names to Trumpet and pay him compensation in the amount of $32,000.
The domain names were not identical to Trump’s trademark but they were deceptively similar because combining the word Trump with the name of some location is a common method for hotels to mark sites.
