6 Ways to Recover a Domain Name from an Infringing Cybersquatter

6 Ways to Recover a Domain Name from an Infringing CybersquatterIf you own one of the more than 3 million trademarks registered with the United States Patent and Trademark Office, there is an excellent chance that a cybersquatter has obtained Internet domain names that are identical or confusingly similar to your mark. Domain names routinely infringe on trademarks.

One reason there are so many trademark-infringing domain names is because of the sheer number of registered domain names. More than 202 million Internet domain names have been registered, far more than the roughly 172,000 entries in the Oxford English Dictionary for words in current use.

But the single biggest reason there are so many infringing domain names is a prevailing lack of knowledge. Most people, including domain name registrants, are unaware of:

  1. federal trademark laws,
  2. the legal significance and consequences of trademark infringement, and
  3. how to determine if a desired domain name might infringe on a trademark.

The domain name industry benefits if the public remains ignorant about trademark law and its relationship to domain names. Domain names have become a billion dollar business. The companies that issue domain names and the companies that facilitate domain name appraisals, auctions and sales all have a vested interest in the domain name market. Thus, they are not likely to kill the goose that laid the golden egg by telling prospective domain name registrants and buyers that a particular domain name may be a ticket to a lawsuit or an Internet Corporation for Assigned Names and Numbers (ICANN) arbitration procedure.

Mark Owners Must be Diligent

The Lanham Act, the federal trademark statute, and the case law interpreting it, place a duty on mark owners to take appropriate action to protect their marks when they discover infringement. It is possible for a mark owner to lose rights in a mark permanently if the mark owner does not take necessary protective action to prevent infringement and improper use of the mark. Mark owners with valuable trademarks should remember the phrase, “Protect it or lose it.”

How to Find Infringing Domain Names

A trademark owner can search for infringing domain names simply by going to a website that provides a comprehensive database of registered domain names. In a matter of a few minutes, a mark owner with a connection to the Internet can obtain a list of all domain names that contain text identical to a mark. I frequently start with BetterWhois when looking for infringing domain names, although any WHOIS lookup will work.

A Trademark Owner’s Options

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.

The following is a non-exhaustive list of options (in order from least to most costly) available to a mark owner for combating infringing domain names:

1. Do nothing

This is the easiest and cheapest course of action, but it runs the risk that the infringing domain names could damage the goodwill of the mark and/or result in the loss of the rights to the mark.

2. Send a cease-and-desist letter on your letterhead

One way to begin legal action against an infringer is to send the infringer what is known as a “cease and desist” letter. This is a letter that states:

  1. I have a trademark (even unregistered common law marks are protectable),
  2. you are infringing on my trademark and causing me damage,
  3. you must immediately cease using the mark and not use it in the future,
  4. you must transfer the domain name to me, and
  5. if you fail to take the action demanded, I’m going to turn the matter over to my attorney to take appropriate legal action, which will include a claim for damages.

This may be worth a try. In my experience, however, the letter from the mark owner is usually ignored. If it works, great; if it does not, you have lost some time but still have the option to escalate the matter.

3. Enter into a trademark license agreement with the infringer

If the infringer is willing to enter into a license agreement governing the use of the mark (which may be unlikely), the mark owner can counter a claim that it failed to adequately police infringing uses of the mark with the argument that the other party was not infringing because it used the mark under the license agreement. The drawbacks to this alternative are that it may cost money to negotiate, prepare and sign the license agreement; the terms of the license may be less than satisfactory; and the licensee continues to use the mark.

4. Hire a lawyer to send a cease-and-desist letter

This approach costs money (maybe less than a lawyer-prepared trademark license agreement), but it does greatly increase the chance that you will get the desired result. It is common for an infringer without substantial resources to comply with the mark owner’s demands rather than risk being the defendant in a lawsuit or an ICANN Uniform Domain Name Dispute Resolution Policy (link) action. On the other hand, if the infringer is making money from the infringing domain name, it is likely that a lawyer’s cease and desist letter will be ignored.

5. File an ICANN arbitration action to obtain the infringing domain names

All registrants/owners of domain names are subject to an arbitration procedure known as ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). This policy is a fantastic weapon for trademark owners that can be used to obtain ownership of infringing domain names relatively quickly and cheaply.

A UDRP arbitration consists of the following steps:

  1. Mark owner files a complaint (maximum length of 15 pages) and pays an arbitration fee (approximately $1,300 for the first domain name at issue).
  2. Domain name owner has 20 days to file an answer.
  3. Mark owner has an option to file a reply to the answer within five calendar days of the date the answer is received.
  4. The arbitrator usually rules within 14 days.
  5. If the mark owner wins, the domain name will be transferred to the mark owner within 10 days of the decision unless the domain name owner files a lawsuit within the 10 day period in the appropriate court seeking to prevent the transfer.

A UDRP arbitration can be filed, won and the infringing domain name transferred within 50 to 60 days, start to finish. Because the only documents a mark owner files in a UDRP action are a complaint and an optional reply, and does not include discovery, briefs, trial or appearance before the arbitrator, the mark owner’s legal fees should be substantially less than an infringement lawsuit.

But the ability of the infringer to defeat the arbitration decision by filing suit can greatly increase the potential costs of using arbitration. This is especially true when the cybersquatter is located in a foreign jurisdiction because part of filing the arbitration is agreeing to submit to the jurisdiction of a court where the cybersquatter is located (at least for review of the arbitration decision). For example, if a Turkish cybersquatter files suit in Turkey to challenge the arbitration decision, are you really going to litigate in Turkey?

Also, if the jurisdiction allows claims based on harming someone’s business, these can easily be added to the suit the cybersquatter files to defeat the arbitration decision.

Generally, any real likelihood that the cybersquatter will appeal an unfavorable arbitration decision counsels choosing a trademark infringement suit over the UDRP arbitration. While the cost to the trademark owner is potentially higher, the cybersquatter’s costs are higher as well. People facing real costs are always more motivated to settle than those who have nothing to lose.

6. File a lawsuit in federal court alleging violations of the Anticybersquatting Consumer Protection Act (ACPA) or other laws

The ACPA is a decade-old addition to the Lanham Act. It gives trademark owners another powerful weapon to use to obtain infringing domain names. The downside to filing a lawsuit is that the mark owner will incur substantially more time litigating the matter than would be required in UDRP arbitration and potentially higher legal fees.

The only remedies in a UDRP action is an award from the arbitrator instructing the registrar of the domain name to cancel, transfer or otherwise make changes to domain name registration. A mark owner who seeks other remedies, such as money damages or an injunction against ongoing infringement, must file a lawsuit under the Lanham Act or other applicable laws.

An ACPA lawsuit can be very effective. The mark owner is entitled to actual damages, or alternatively, the court can award statutory damages of up to $100,000 for each infringing domain name. In one ACPA lawsuit, the notorious typosquatter John Zuccarini was ordered to pay statutory damages of $500,000 for five infringing domain names plus the mark owner’s attorneys’ fees and costs of more than $60,000.


Trademark owners should use the resources of the Internet to monitor their marks periodically for possible infringing domain names. If an infringing domain name is found, the mark owner should take appropriate action to protect the mark and prevent future infringement. ICANN’s Uniform Domain Name Dispute Resolution Policy and the Anticybersquatting Consumer Protection Act give mark owners powerful tools to stop infringing domain names and obtain ownership of the domain names. Mark owners who fail to properly police infringement of their marks risk finding that they have lost their rights in the mark.

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16 Responses to “6 Ways to Recover a Domain Name from an Infringing Cybersquatter”

  1. @charles This was really helpful however I don’t know how difficult this will be to execute from india.

  2. KARARYU says:

    DNFR ALERT!!! Automated DNFR AKA cybersquatting, is being loosely performed through Strictly ANY NAME WHATSOEVER you submit to their WHOIS search gets automatically taken under the extensions .us, .biz, .ca and .cn, invariably as a minimum, plus up to 11 other extensions, depending on the punch of the name. Give it a try and just figure it for yourself, hammer in any kind of random keyboard rage and watch! Also worth of mention that this WHOIS lookup works in gears up with… guess?!…

  3. Amanda says:

    Thanks for the insightful article. I have a copyright registration certificate from USCO (Copyright Office) for a particular term. I see that a domain squatter is sitting on the .com term for that domain, while I have quickly registered the .net domains.

    How can I take the domain back. Do I need a trademark or registered copyright with sufffice. I also see that the squatter has used the name as a twitter username. Can I approach twitter also to ask them to cancel the name ?

    1. Hi Amanda,

      UDRP is the process by which you can assert your rights as a trademark holder. However, you must prove 3 things to do so:

      If you’re not sure what to do after watching that video, it’s time to hire an attorney to help you.

      Regarding Twitter, they have their own policy regarding trademarks and usernames:

      Again, likely a good idea to consult an attorney.

      Good luck,

  4. I have not been able to find an answer to this question.
    I started a business built on a name, Finescents for retail perfume sales both online and brick and mortar. There were no conflicting trademarks, so I obtained the trademark for the above scope. I have a retail website under and own, and would obviously like the .com address. It is not in use but owned and represented by Uniregistry. They offered to sell it for $50,000 which is pretty ridiculous compared to other addresses of similar length and wording. I have now been offered to buy it for $10,000, or the seller will “sit on it and monitor your business, selling it to you for more once your business is successful”.

    Do I have any recourse to obtain the website for a reasonable amount, with the name being trademarked and in use for nearly two years? Thanks for any information!

    1. Hi Steve,

      I’m not a lawyer and this is not legal advice.

      Trademarks, UDRP and other legal advice should be discussed between you and a lawyer. Every domain name and situation is different. I am not a lawyer, nor do I provide legal advice.

      It looks like your trademark was registered in 2015 ( and it looks like the domain,, was registered back in 2001 (2001-09-03,

      Therefore, it appears that the current registrant didn’t register it in bad faith to take advantage of your trademark (one of the criteria of winning a UDRP case).

      Your first step is to become educated. I suggest you familiarize yourself with trademark law and these shows might assist you in your journey:

      It appears to me that you have a few options: negotiate (terms, payment plan, price, lease, etc.), change your name, or continue to operate using the .net TLD of your name. Plenty of other sites use a .net domain name successfully.

      Again, I’m not an attorney. Here are some good ones if you still have questions:

      At the end of the day, it becomes a business decision for you. What are the prospects of building a large business on that domain name? Can you build a larger one with another domain name? How much would alternative names/brands cost you?

      I’ve launched many companies in the past two decades and naming/branding is always hard. Best wishes to you.

      Best regards,

      1. Thank you so much Michael! That’s a lot of info, I figured I didn’t have much recourse. Time to educate myself!

    2. You used quotation marks here… “sit on it and monitor your business, selling it to you for more once your business is successful”. But you don’t say where that comes from. Is it from a salesperson at Uniregistry?

      1. Yes from the salesperson in an email

  5. James says:

    I hired on person in my company to open an online shop with brand name. She was fired but did not hand out all the information about the domain name. She registered it with her name.
    We have invested in the conception of the project and we had to buy a new domain name but with .net.
    Tha problem is, she is using the .com to link it on other website with similar name as ours. Now, we want to rescue the domain name she has which is our but I do not know how to do or how to issue her for that.
    Need any help from anyone.

    1. Have your attorney send her a letter. That will likely work to get the domain back pretty quickly. Should that fail, take her to court.

      Your HR department should have her mailing address. Should that fail, hire a private investigator to find it so you can serve her your attorney’s letter.

  6. Derick says:

    I have a question.
    If you hand register names like , or something highly similar..
    Can someone who owns a a company “U9 Systems” Sue you just for having the domain name? Undeveloped,un parked etc.

    I ask because I have a few,maybe,random typed H1/B1 .com,s and one day I checked on Google,and One of these companies actually Exist, and claim they own the exact very same .Com I did,but Im guessing their directory was made years and years before,so they obviously dropped that domain name because I hand registered it.

    Can they pop up one day,and Sue me for it even though they preivously owned it and obviously didnt value it enough to Keep it,knowing someone else could register it?

    Thank you for any help

    1. Hi Derick,

      Anyone can sue you for anything. You don’t need to be in the “right” to sue anyone, or even file a UDRP case against you.

      Having said that, you’re less likely to get sued or have a UDRP case filed if you don’t register any domain names that contain or are trademarks.

      There are three criteria for a complainant winning a UDRP:

      If you stay clear, you should be fine.

      Good luck,

  7. Only wondering how the added complexity of a Private Whois affects the steps you outline above. If one sends a Cease and Desist to the Private Whois address, can we assume that it makes it to the actual registrant?

  8. Aishwar Sharma says:

    *Very* useful article, @charlesrunyan.

    I especially like the progression of actions, from lowest cost and effort, to highest cost and effort. It’s useful to know the range of costs, as well, as most writers say “do a UDRP” but don’t tell you how much. Thanks for providing that information.

    I can’t wait for more of your articles!


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