Revisiting an old problemIt’s hard to believe that almost five years have passed since I posted on this blog about cybersquatting, or typo-squatting. You can read that older post to get the basic ideas; but the examples I gave there no longer work. (I foresaw at the time that my post might prompt action by the broker I used as an example; I’m glad I was right.)
As I noted in that older post:
A common problem in the industry is that large brokerage firms are great targets for cybersquatters. According to the Anticyersquatting Consumer Protection Act (15 U.S.C. 1125(d)) or ACPA, cybersquatting, or cyberpiracy, is registering, trafficking in, or using a domain name identical to or confusingly similar to someone else's trade- or service mark in bad faith. The most common form in our industry results in folks registering a domain name that is a slight variation of a broker's firm name (also called "typosquatting"), putting up a page on the resulting domain, and selling real-estate-related links on the page. In most cases, this violates the trade- or service marks of the broker and may violate the ACPA.
You should be prepared for a whole new wave of problems associated with cybersquatting in the coming couple years, as ICANN (the international regulator of Internet domain names) has received nearly two thousand applications for new top-level domains (TLDs), the part of a domain to the right of the last dot: e.g., .COM, .NET, .ORG.
Very soon, hundreds of new TLDs will be in use, including real-estate-related .REALTOR, .REALESTATE, .HOMES, .REALTY, .PROPERTY, and .PROPERTIES. Additionally, many TLDs not apparently related to real estate might still be used by cybersquatters. So, for example, if you are ABCRealty with your website at ABCRealty.com, you might expect to find cybersquatters at any of the following addresses, using the domains above or many others:
- ABCRealty.careers • ABCRealty.luxury
If your MLS has a consumer-facing listings website, it can expect similar problems. What can you do to prevent or remedy them?
Prevention and remedyThe old remedies (described in my earlier post) still work:
- A UDRP arbitration by the trademark holder against the cybersquatter. This is a well-developed mechanism, but it comes with relatively high costs if you have to pursue squatters on potentially dozens of domains.
- Litigation against the cybersquatter. This is very expensive, and may not be effective at all unless the domain registrant, or registrar, or both are in the U.S.
But because of all the potential new TLDs, ICANN agreed to implement a couple additional protections. One is the “trademark clearinghouse,” and the other is the Uniform Rapid Suspension System.
The trademark clearinghouse is a prevention play: It’s a place where you can register your trademark to provide certain advantages. But it is generally available only to U.S. trademark owners who have federally registered their trademarks with the U.S. Patent and Trademark Office. (That comes with some expense, too. Probably a minimum of $700-800 per mark, and more like $1600-1700 if you hire a law firm. Expense can go higher, usually in the form of attorney fees, if you need to negotiate your registration with the PTO.) The trademark clearinghouse comes with a minimum fee of $150 per year per mark that you want to protect.
The Uniform Rapid Suspension System (URS) is a remedy: It’s available on all the new generic TLDs. (It does not necessarily cover the two-letter country-code TLDs, like .LY, .TV, etc., or the “legacy” TLDs like .COM, .NET, etc., though they may opt into it latler) The URS is different than the old UDRP in several respects:
- URS is faster.
- URS has a higher standard of proof for the complaining mark owner.
- URS is cheaper, in terms of the fees due to the arbitration provider. (Your attorney fees will likely be the same as for UDRP or higher because of the higher standard of proof.)
- If the complaining mark owner wins, URS provides a temporary remedy—suspension of the registration of the wrongdoer—rather than the permanent remedy of UDRP—transfer of the domain name to the complaining mark owner.
It might be appropriate to consider using both URS and UDRP together in certain cases. The rules for both are complicated, and I don’t recommend using them without legal help. But any intellectual property attorney with Internet and dispute resolution or litigation experience should be able to help you.
There’s one other play you can make: Support MLS Domains Association. This association of MLSs is working with the Canadian Real Estate Association to make sure that the only folks registering domains on the .MLS TLD in the United States will be real MLSs. The other applicant for the .MLS TLD, Afilias, has stated that it intends to sell 50,000 .MLS domains in the first three years of the operation of .MLS. Afilias is an international company that operates several other registries, including .INFO, .MOBI, and .ASIA. CREA has invested a considerable amount of effort and treasure in the contest with Afilias. CREA may yet win on technical grounds, but it is also possible the matter will go to auction. MLS Domains Association provides moral and modest financial support to CREA’s effort, and every little bit counts. If Afilias prevails, you can expect ABCRealty.MLS, YourHomeTown.MLS, etc.
I welcome your questions and comments.
(Disclosure: I’m a volunteer board member and corporate secretary of MLS Domains Association, and I’ve previously received consulting fees from it. I’m completely biased about its efforts, and proud of that fact!)