Cybersquatting or cyberpiracy is when someone registers a domain containing your name or that of your business and does it to deprive you of the ability to register that domain. There are several ways to combat this cybersquatting and fight cyberpiracy as it is also known from contacting the domain registrant and notifying search engines to alerting the FTC and FCC in the federal government and filing a lawsuit. But a more proactive approach to guard against this kind of hijacking is to purchase domains and register trademarks for your business. https://www.davidsteinfeld.com/combat-cybersquatting-cyberpiracy.html

1. 8/14/23, 11:53 AM How to combat cybersquatting or cyberpiracy
https://www.davidsteinfeld.com/combat-cybersquatting-cyberpiracy.html 1/7
How to combat cybersquatting and fight
cyberpiracy
Cybersquatting or cyberpiracy is when someone registers a domain containing your name or that of
your business and does it to deprive you of the ability to register that domain. There are several ways
to combat this cybersquatting and fight cyberpiracy as it is also known from contacting the domain
registrant and notifying search engines to alerting the FTC and FCC in the federal government and
filing a lawsuit. But a more proactive approach to guard against this kind of hijacking is to purchase
domains and register trademarks for your business.
What exactly is cybersquatting and cyberpiracy
Before examining what you can do in response to cybersquatting or cyberpiracy it is important to
define and understand the terms that impact situations where someone uses your name or that of
your business in a web domain.
A domain is an address on the internet like www.ThePalmBeachBusinesslawyer.com. A website is
what we see on our screen when we reach a domain but it is different from the domain. A domain
may host a website or a website may reside on a domain. But that is not necessary or required
because a domain can also point to another domain to direct traffic to the second domain. So the
domain is like a street address and the website is the house you may find at that address but there
does not always have to be a house at the address and might be a sign that sends you to another
address where the house is located. The Anti-Cyberpiracy Act is focused on domains not on
websites.
What does the Anti-Cybersquatting Consumer
Protection Act do?
In the earlier days of the internet in 1999, Congress passed the Anti-Cybersquatting Consumer
Protection Act. The Act is part of the federal trademark law commonly called the Lanham Act and is
found at Title 15 Section 1125(d) of the US Code. It is a civil law and is formally titled Cyberpiracy
Prevention. Congress enacted the law to promote online commerce and prohibit bad faith and
abusive registration of domain names. So the purpose of the Act was essentially to remedy when
someone registers a domain to intentionally deprive another from using that domain.
The Anti-Cybersquatting Act provides for in personam and in rem actions. This meaning that you can
either sue the registrant of the offending domain which is in personam or if you cannot determine
the identity of that person you can sue over the domain itself as if it was a piece of property like a

2. 8/14/23, 11:53 AM How to combat cybersquatting or cyberpiracy
https://www.davidsteinfeld.com/combat-cybersquatting-cyberpiracy.html 2/7
house or a boat which is the in rem action. In personam and in rem actions deal with how a court
obtains jurisdiction in a case so it has the power to act under due process requirements.
How does federal law interpret and react to
cyberpiracy or cybersquatting
The key concept behind cybersquatting and cyberpiracy is not the registration of the domain but
doing so in bad faith. The ACPA defines bad faith as the intent to divert consumers from the
trademark owner’s online location. Bad faith intent is also characterized as one designed to harm the
goodwill or tarnish or disparage the mark by creating a likelihood of confusion as to the source,
sponsorship, affiliation, or endorsement of the site.
What this means is that when someone registers a domain containing the name of someone else or
their trademark the registrant runs afoul of the Anti-Cybersquatting law if their intent is to prevent
the first party from owning or using the domain or to harm the trademark owner in some manner.
Important cases decided under the ACPA
Cyberpiracy is the same as cybersquatting. In the early days of the internet back in 1996 the plaintiff
in the federal Panavision case found at 945 F. Supp 1296 (C.D. Cal. 1996) held the trademark of
Panavision and sued the defendant who had registered the domain of Panavision.com and tried to
sell it to Panavision for $13,000. The court sided with Panavision that this was cyberpiracy and noted
that the defendant had also registered domains of aircanada.com and deltaairlines.com with the
intent of holding those for ransom from those airlines.
Similarly in the 2010 DSPT case at 624 F.3d 1213 (9th Cir. 2010) the court upheld the jury’s verdict that
registering a domain using the name of the defendant’s former employer was cybersquatting even
though that company only a had common law trademark for its own name.
Remedies under the ACPA
The remedies available under the ACPA at 15 U.S.C. Section 1114(2)(D) are primarily injunctive relief
but in certain cases can also include monetary damages and attorney’s fees. If the domain registrant
is shown to have a bad faith intent in maintaining the offending domain then that party can be held
liable beyond an injunction. Equally so if the domain registrant entity is notified of the infringement
and suspends, disables, or transfers the domain then that party can pursue the person who
registered the domain for its monetary damages and attorney’s fees.
Is there a Florida law equivalent to the federal
Cybersquatting law
Not exactly. Florida does have a trademark law located in Chapter 495 of the Florida Statutes but
that Chapter does not specifically address internet domains. This is because the internet crosses
state lines so regulation of the internet lies primarily with the federal government.

3. 8/14/23, 11:53 AM How to combat cybersquatting or cyberpiracy
https://www.davidsteinfeld.com/combat-cybersquatting-cyberpiracy.html 3/7
Florida’s trademark laws have not yet been used in a reported cyberpiracy or cybersquatting civil
case meaning that no appellate court had reviewed any trial court rulings on such a case and
rendered a written opinion on it. However under Section 495.012(1)(d) of the Florida Statutes it is
illegal to register a trademark containing the name of another person without that person’s consent.
So extrapolating a bit on that concept it stands to reason that a person or business may also not use
the name of another person or business if it is not also their name in a domain that advertises to
Floridians. Doing so would infringe on the mark of the other person or business.
Should you file a Florida trademark claim too?
In evaluating the claims that can be brought in a business lawsuit, if it is used at all, Florida’s
trademark law may simply serve as a support for a federal cybersquatting claim because the Florida
version does not specifically address cyberpiracy like its federal counterpart. The remedies offered
under Section 495.141 though allow for injunctions and disgorgement of ill-gotten gains in the form
of the profits earned by the defendant. Florida’s trademark law also gives the court the ability to
award up to three times the actual damages in its discretion as compensation and to award
attorney's fees to the prevailing party. So adding this claim in a cybersquatting case requires a
careful assessment with your business lawyer to determine whether the situation supports the claim
and whether the damages may be distinct from the federal claim.
What can you do in response to cyberpiracy or
cybersquatting
You can always file a lawsuit within the statute of limitations period. But before doing that you might
consider these alternatives to react to cyberpiracy or cybersquatting that may remedy the situation.
1. Contact the domain registrant
The domain registrant is the person or business that registered the domain. You can generally find
this information easily on websites like WhoIs.com or search using a search engine for the identity of
the domain registrant. Often the domain registration information contains a method to contact the
registrant. That party may be a conduit for the actual wrongdoer or may be the actual party that
purchased the domain. The registrant may not be aware of your trademark and may be willing to
cancel the registration, sell, or even turn over the domain to you.
What you must bear in mind is that it is not illegal to register a domain in that the simple act of
registering the domain does not by itself violate the Anti-Cybersquatting Consumer Protection Act.
The registration must be accompanied by bad faith to qualify as cyberpiracy. So when you contact
the domain registrant you should address this element by inquiring as to the purpose that the
registrant had in registering the domain if the registrant contends that they have a right to own and
use the domain.
2. Notify search engines
Another response option either by itself or together with contacting the domain registrant is to alert
search engines like Google to the cybersquatting violation. The search engine may have its own

4. 8/14/23, 11:53 AM How to combat cybersquatting or cyberpiracy
https://www.davidsteinfeld.com/combat-cybersquatting-cyberpiracy.html 4/7
prohibitions against this type of conduct and its own reporting criteria or reporting forms. So it is
appropriate to research on the search engine as to how to report this type of conduct.
Reporting bad faith domain registration or usage may inform the search engine about the conduct
but it may not provide a remedy without more. So when researching the method by which you can
alert the search engine to this conduct you should also review what the search engine says it will or
can do in response to the offending domain. If the search engine does not have any published
protocol then consider asking the search engine to remove the offending domain from searches by
de-listing it or de-indexing the domain. That will leave the domain registered but it will not appear in
searches on that search engine.
3. Alert the Federal FTC and FCC
The Federal Trade Commission and the Federal Communications Commission have some oversight
over domains, websites, and the internet. Those agencies have reporting methods online for
informing them about cyberpiracy and cybersquatting.
Because the Act is civil and is part of the larger trademark laws it is unlikely that either of those
agencies will undertake any action on your behalf but they do collect the information and it may be
beneficial later. Given that there is no cost to report cybersquatting to these agencies it is an action
to consider in your response to the conduct and should be an option you discuss with your business
lawyer.
4. File a lawsuit
In addition to the options identified above you can file a lawsuit against the domain registrant for
violating the Act. In addition to proving the registration you must prove your claim to the domain
name and the bad faith of the registrant in registering that domain. The Act itself provides for a
range of remedies that you should discuss with an intellectual property litigator or business litigation
attorney that tries trademark and intellectual property cases.
The factors to evaluate in whether to bring a lawsuit and how to structure the claim along with what
other legal claims to bring are too numerous and too broad to address in this article. But one factor
may be the actual impact of the offending domain balanced against the impact that the lawsuit may
have on you or your business.
Proactive alternatives to reacting to cyberpiracy
These are some alternatives that you can undertake to guard against cyberpiracy and
cybersquatting in order to deter someone from stealing your personal name or your business name
and using that in an internet domain in violation of anti-cybersquatting laws. These options are not
an exclusive list and you should discuss all options with your business lawyer and your IT
professional.
Register your own domains

5. 8/14/23, 11:53 AM How to combat cybersquatting or cyberpiracy
https://www.davidsteinfeld.com/combat-cybersquatting-cyberpiracy.html 5/7
In some cases you may learn of cyberpiracy and have no option but to react but it may be possible
to limit these instances by registering your own domains to prevent others from being able to
register and hold those hostage from you later. Also trademarking your business name, logo, and
other phrases may place you and your business in a better position to prevail on cybersquatting
claims if you later have to bring those in a lawsuit or persuade a search engine to de-list an
offending domain.
If you own your business name or professional name you can register those as domains as long as
others have not done so first. Registering variations of your business name, protected name, or catch
phrase may also make it less likely that cyberpirates will target your business and hijack domains
using those. The balancing act that your business should evaluate is the cost of registering and
maintaining all those domains versus the benefit to be obtained from them. It may be difficult to
identify and register every possible option but even registering a few may make it more difficult for
your business to become a target of opportunity for cyberthieves.
Trademark your business logo and catch phrases
If you use your business name in commerce then you likely have a common law trademark on that
name. However many businesses use fictitious names or catch phrases to identify and market
themselves more effectively. These other names and phrases can be trademarked in most cases
either in Florida or federally or both depending on the requirements of your business. To learn how
to trademark your business logo in Florida please refer to my article on that topic.
Trademarks do not prevent someone else from using the name or catch phrase but they are
intended to provide a more efficient mechanism by which to bring a stop that infringing conduct. For
their cost trademarks make good business sense to both protect the business as well as to enhance
its value.
Trademarking the fictitious name of your business or its catch phrase will not prevent a cyberthief
from registering a domain with that name or phrase in bad faith if you have not already done so but
it will make it easier for you to show that you are the owner of a protected mark that is worthy of
protection. That can later make it easier for you to remedy cyberpiracy or cybersquatting should you
become the unfortunate victim of such an act.
Conclusion
While it may not be possible to absolutely prevent cybersquatting or fully guard against cyberpiracy
given the ease with which one can register a domain on the internet there are proactive actions and
responses that you and your business can take other than filing a lawsuit that you should consider.
In the final analysis whether you act effectively before someone uses your personal name or
business name in bad faith in a web domain or react to the act of cyberpiracy and cybersquatting
your business must balance the impact of these malicious acts against the costs to combat or

6. 8/14/23, 11:53 AM How to combat cybersquatting or cyberpiracy
https://www.davidsteinfeld.com/combat-cybersquatting-cyberpiracy.html 6/7
remedy them in evaluating with your attorney whether any action is warranted in response to bad
acts that qualify as cyberpiracy or cybersquatting.
Written by expert business lawyer David Steinfeld
David Steinfeld is one of the few Board Certified business law experts
in Florida. He has been licensed for over 25 years. He is AV-Preeminent
rated, ranked as one of the Best Lawyers in America by U.S. News and
World Report, and consistently named a Florida Super Lawyer and one
of Florida’s Legal Elite. Dave has also received Martindale’s prestigious
Judicial Edition Award for high reviews by Judges, its Platinum Client
Champion Award and has a 10.0-Superb rating on AVVO as well as a
10.0 rating on Justia, lawyer reviews websites.
Check out business lawyer David Steinfeld online for helpful videos and articles on Florida business
law, real estate disputes, and electronic discovery solutions for your business. This article is provided
for informational purposes only.

7. 8/14/23, 11:53 AM How to combat cybersquatting or cyberpiracy
https://www.davidsteinfeld.com/combat-cybersquatting-cyberpiracy.html 7/7
Law Office of David Steinfeld
3801 PGA Blvd, Suite 600
Palm Beach Gardens, FL 33410
Phone: (561) 316-7905
Fax: (561) 828-7637
email: info@DavidSteinfeld.com
© Law Office of David Steinfeld
The Palm Beach Business Lawyer