Cybersquatting: How to Win Back Stolen Domains in Singapore
What is Cybersquatting?
Cybersquatting refers to the registration of a third-party’s business name or trademark in a domain name in bad faith. A domain name is the address that directs one to a business’ website and may include that business’ name.
An example of cybersquatting includes the registration of the domain “www.straitstimes.com”, by a third-party who has no legitimate rights or interests in the existing business name, “straitstimes”, seeking to profit or re-direct users to its own website. A person who commits the act of cybersquatting, is referred to as a cyber-squatter.
Most cyber-squatters are opportunists, seeking to illegally profit from the registration of the domain name by selling the domain name for a much higher price than the cost of registering a domain.
Other reasons for cybersquatting include attempts to:
- Prevent a legitimate business from establishing an online presence in a specific country or industry
- Bring reputational harm to the legitimate business through the use of the squatted domain for illicit purposes (e.g. maliciously infecting users’ devices with viruses, spyware or malware).
How to Recover a Squatted Domain Name
There are several options to recover a squatted domain. This article will discuss two of which:
- Negotiating with the cybersquatter; and
- Filing an administrative action with Uniform Dispute Resolution Policy (UDRP) or Singapore Domain Name Resolution Policy (SDRP) depending on the type of domain.
It is always recommended, however, to seek legal advice from an Intellectual Property lawyer before taking any steps to recover your domain.
Negotiation with the owner of the domain
The first step involves identifying the registrant of the domain name in question.
You may obtain information about the existence, status and identity of the registrant of the domain name in question here for Generic Top Level Domains (gTLDs), for example, .com/.org/.net domains. In most cases, at least the registrant, administrative or technical contact details will be available.
In Singapore, the Singapore Country-level Top Level Domain (ccTLD) .sg registry is the Singapore Network Information Centre (SGNIC) which mandates certain registrant information made available to the public, such as technical contact email address or the functional contact information of the domain owner. You may find such information for .sg domains here (in the Whois box on the top right of the screen).
Once you have successfully identified the registrant of the domain name, you may negotiate with them (ideally through your lawyers), to do one of the following (non-exhaustive) acts:
- Assert your prior trademark rights or business reputation in the jurisdiction (if you haven’t registered a trademark for your domain name) to request for a transfer of the domain name;
- Request to purchase the domain name at a reasonable price; and/or
- Request that the third-party stops using the domain and place a backorder for the domain. A backorder is a service that assists to acquire a domain name once it becomes available for registration.
Factors to consider when choosing between the three options above include your prior trademark or passing off rights, the importance of the domain name in question to you, the identity, jurisdiction, and responsiveness of the registrant, and of course, the costs involved in engaging a lawyer to negotiate on your behalf. Your lawyer (if you have one) will also advise you on an appropriate course of action based on these factors and the facts available.
If negotiations are unsuccessful, you may consider filing an administrative action for a transfer of the domain name in question.
File an administrative action
Administrative actions provide for efficient, low-cost out-of-court settlements for disputes over domain names.
The UDRP, which has been adopted by all ICANN- accredited domain name registrars, require the registrars to implement administrative actions for resolving domain name disputes.
For .sg domains, domain name administrative actions shall be initiated with the Singapore Mediation Centre which manages the SDRP.
Since the SDRP is modelled after the UDRP, the procedure and the substantive requirements are largely similar for administrative actions under both the UDRP and SDRP.
Under an administrative action, the party disputing the domain name (referred to as the complainant) must establish three elements against the alleged cybersquatter (referred to as the registrant):
1. That the registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights
Generally the complainant must have exclusive rights to the name, trademark or service mark in question, which is granted by way of a registered trademark. The registered trademark should also not be generic or descriptive.
It is also possible for the complainant to rely on the common law of passing off alone to assert their reputational rights if they do not have any registered trademarks.
2. That the registrant had no rights or legitimate interests in the domain name in question
The SDRP provides guidelines which, if proved, would constitute evidence of the registrant having no rights or legitimate interests in the domain name. This includes where:
- The registrant does not demonstrate preparations to use the domain name before notice of the dispute. For example, there was no continued development of an established website that shows legitimate interests in the domain name.
- The registrant is not commonly known by the domain name. The registrant is making illegitimate, commercial, unfair use of the domain name with intent to mislead consumers or tarnish any relevant trademarks.
3. The domain name in question has been registered or is being used in bad faith
The SDRP also provides guidelines to determine bad faith, which includes evidence that the registrant:
- Acquired the domain name for the purpose of selling, renting, or otherwise transferring the domain name to the complainant for profit;
- Registered the domain name to prevent the complainant from using the domain name, provided a pattern of conduct can be established. For example, the passive holding of numerous domain names may amount to bad faith;
- Registered the domain name to disrupt the business of a competitor; or
- By using the domain name, intentionally attempted to attract consumers, for commercial gain, by creating a likelihood of confusion with the complainant’s registered trademark.
The Administrative Panel, consisting of one or three members, will decide on a complaint on the basis of the evidence submitted, and in accordance with the SDRP, SDRP Rules and any rules and principles of Singapore law that it deems to be applicable. Most complainants choose a single-member panel as it is cheaper.
If the complaint is successful, SGNIC will transfer the domain name to the complainant after 10 working days from the time they are informed of the decision.
Instead of filing an administrative action, the dispute can also be filed in court. We recommend that you consult an Intellectual Property lawyer on the merits of your case and whether you should file an administrative action or take some other action to resolve the dispute.
Reverse Domain Name Hijacking
Filing an administrative action under the SDRP (or UDRP) to prevent a legitimate owner from using his domain name is referred to as “Reverse Domain Name Hijacking”.
If the Administrative Panel finds that the complaint was brought in bad faith, ie, without a genuine belief that the domain in question was illegitimately registered, or to harass the registrant, the Administrative Panel is required to declare that the administrative action was filed in bad faith, and this constitutes an abuse of the administrative proceeding.
While there may be no financial detriment to the complainant for Reverse Domain Name Hijacking, there may be negative publicity considerations, since all decisions by the Administrative Panel are published and available to the public.
Therefore, it is always important to seek legal advice before filing an administrative action in case the action is found to have been brought in bad faith.
How to Prevent Cybersquatting
In order to prevent cybersquatting, it is a best practice for businesses to register at least a gTLD (.com, .net, or .biz) domain and ccTLDs in the countries you operate in. The registration of domain names works on a first-come-first-serve basis. Hence, by registering your domain names first, you’re able to prevent cybersquatters from doing so.
In Singapore, SGNIC and the Intellectual Property Office of Singapore (IPOS) have collaborated to provide a service to reserve a .sg domain name for free when a new trademark is filed in Singapore.
Often, trademarks are registered to protect the goods and services provided by a business or individual. The same concept applies to domain names, as they are territorial in nature, and may form an invaluable asset for your business.
If you have any queries on cybersquatting or domain name disputes, please feel free to consult one of our Intellectual Property lawyers for advice.
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