We covered cybersquatting in class and learned that it is a subspecies of a registered trademark claim. Cybersquatting occurs when a person registers the “trademark” of another person or entity as a domain name. For celebrities, their name does not have to be formally registered and they obtain common law trademark rights to their name due to the popularity they have achieved in becoming a “household” name. Celebrities and others looking to file suit against cybersquatters do so under Uniform Dispute Resolution Policy. This method of arbitration is beneficial and the most economically effective because it helps to reduce litigation costs. To determine whether someone is in violation of cybersquatting the courts look to the Anticybersquatting Conusmer Protection Act requiring the plaintiff to prove
1. The domain name registratn registers a domain name containing a third party trademark
2. the Registrant has a BAD FAITH intent to profit from the domain name. Bad Faith is influenced by 9 factors –
- the registrant’s IP rights in the domain name
- if the domain name contains the registrant’s real name
- the use of the domain name in a bona fide offering of goods/services
- a bona fide non commericial or fair use of the domain name
- an intent to divert consumers in a way that harms the trademark owner’s goodwill
- an offer to sell the domain name without having used it for a bona fide offering of goods/services
- providing false contact info
- multiple bogus registrations
- distinctiveness/famousness of the mark
3. The registrant has registered, trafficked in, or used a domain name that is identical or confusingly similar to the mark or, in the case of a famous mark, dilutes the mark.
After learning about cybersquatting, I thought about the recent websites that demonstrated pictures of Antonella Barba, American Idol contestant, and I wondered if she could ever have a cybersquatting claim against those registrants. Of course, Antonella Barba has not been in the limelight too long but the controversy surrounding her pictures has made her a household name. I did a search of the websites that are registered with her name and found www.antonella-barba.org, which is a fan site in support of the wanna be Idol. However, the website that has caused the controversy and posted the pictures of Antonella in some compromising positions is www.antonellabarbapix.com. Under the ACPA, I believe that Antonella may have a claim against the registrant. From looking at this website, it is clear that the registrant as an intent to divert consumers in a way that harms the trademark owner’s goodwill. Many of Antonella’s legitimate fans may be searching for a website to learn more about her and may come across this website instead. The registrant is aware of Ms. Barba’s popularity and is using the website to promote the pictures and stir up controversy. Also, the registrant is using advertising revenue by posting other commercial websites and therefore the website lacks a bona fide non commercial use. However, it may be difficult for Antonella to win this claim because of the fact that the website may have actually helped to increase Antonella’s popularity. As an American Idol fan, I believe the national attention the website has created may have been a god send for Antonella because unfortunately it is not her singing talent that is keeping her on the show. This is definitely a case of “ANY PUBLICITY is GOOD PUBLICITY.”
