A legal primer for candidates and campaigns
As Internet use and new media engagement continue to see exponential growth, the number of Internet users targeted by some type of online deception or scam has grown right along with it. For candidates and campaigns, the trouble often comes in the form of cybersquatters.
Cybersquatting generally refers to the registration and use of an Internet domain name with a bad faith intent to profit. Some of the earliest forms of cybersquatting involved the use of domain names that corresponded to famous brand names to display offensive or revenue generating website content. Cybersquatters typically engage in these activities for the purpose of selling the domain name to the brand owner or otherwise making money based on the domain name’s trademark significance.
A recent study by The Coalition Against Domain Name Abuse revealed that third parties own domain names corresponding to the first name, last name, plus “.com” for 52 percent of current U.S. Senators and 60 percent of current U.S. Representatives. Although certain of these domain names appear to be owned by individuals who happen to share the same name as a member of Congress, a number of them are being used to display websites with revenue generating advertisements or undesirable content.
Political operatives will tell you that the best defense against domain name abuse is a good offense—register as many domains with variations of your candidate’s name as quickly as you can. But if another party has already gotten ahold of one, you may have a legal remedy available. In certain cases, action can be taken to obtain the transfer of the domain name to the person or party whose name has been misappropriated.Legal Remedies
There are two primary legal frameworks available to address political cybersquatting: One is the U.S. Anti- Cybersquatting Consumer Protection Act (ACPA), and the second is the Uniform Domain-Name Dispute-Resolution Policy (UDRP) established by the ICANN. Each framework offers potential resolutions and has both advantages and drawbacks. The ACPA creates a civil remedy through the federal court system for trademark owners and individuals whose trademarks or names have been misappropriated as domain names.
Initiating an ACPA action involves federal court litigation and the associated costs and procedures, but monetary relief is available and preliminary injunctive relief may be available in certain circumstances. In contrast, the only remedy available through a UDRP proceeding is the cancellation or transfer of the domain name. However, the UDRP administrative arbitration procedure is typically more economical than federal court litigation and a successful UDRP filing can result in transfer of a domain name within about two months.
All generic top-level domain names (.com, .net, .org, etc.) are subject to the UDRP by virtue of the policy’s contractual incorporation into all domain name registration agreements. The UDRP was created to provide a means of obtaining the transfer of wrongfully registered and used domain names that adversely affect trademark rights, without the need to file a court action.
To successfully challenge a domain name registration under the UDRP, the complainant must show the following through legal argument and evidence: the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; the registrant has no rights or legitimate interests in the domain name; and the domain name has been registered and is being used in bad faith. The UDRP does not require that complainant own a registered trademark, but a failure to establish trademark rights will result in denial of the UDRP complaint.
Political figures and organizations can face challenges in establishing trademark rights sufficient to obtain the transfer of a domain name under the UDRP. Former Maryland Lt. Gov. Kathleen Kennedy Townsend and former Planned Parenthood President Gloria Feldt both had UDRP domain name complaints denied based on their failure to sufficiently prove that they possessed trademark rights in their names.
However, it is possible for politicians and other public figures to satisfy the requirements for transfer of a domain name under the UDRP as demonstrated by the domain name transfer orders obtained by Secretary of State Hillary Clinton (hillaryclinton.com) and London Mayor Boris Johnson (backborris.com).
If a lack of trademark right eliminates the UDRP as a viable option, the ACPA provides a cause of action for individuals whose names have been registered as domain names by someone who intends to profit by selling the domain names. Filing an action under the ACPA may also be appropriate for consideration if immediate court intervention is needed due to the highly objectionable nature of a particular website.
In a civil action brought under the “cyberpiracy protection for individuals” ection of the ACPA, a U.S. federal court is empowered to order the transfer or cancellation of the domain name as well as costs and attorney’s fees.
Contrary to certain notions that were first propagated during the Internet boom of the 1990s, the Internet is not the Wild West and there are strategies and legal grounds for obtaining the transfer of wrongfully registered and used domain names. Given the existence of these potential remedies, and the growing importance of Internet communications in American politics, we expect an even greater focus on these issues in the years ahead.
Michael E. Toner, former chairman of the FEC, is co-chair of Wiley Rein’s Election Law & Government Ethics practice. David E. Weslow is a partner in the Intellectual Property Practice at Wiley Rein.