There are several reasons trademark owners send Cease and Desist letters. Today I’m going to take a look at sample Cease and Desist letters sent by prominent brands to parties abusing their trademark within a website domain name.

Anybody can register a domain that contains a trademark. It is only when that domain is put to illegal use that a company has a responsibility to act, in order to protect the business entity from trademark infringement and dilution.

Common reasons to send a Cease and Desist order for infringing domain names:

1. Halt commercial use.
In July of 2006 Google Inc. sent a Cease & Desist letter to an individual infringing on the Google trademark by registering and serving ads on a website named “Googlecalendar.com.” Google’s legal counsel writes:

“You have registered, without Google’s permission or authorization, the domain name googlecalendar.com (the ‘Domain Name’). The Domain Name incorporates the famous GOOGLE mark in its entirety. Please note that your registration and use of the Domain Name incorporating the famous GOOGLE mark in its entirety constitutes trademark infringement, dilution, and bad faith registration under the UDRP. Your registration and use of the Domain Name is actionable under the UDRP. Under similar circumstances, Google has prevailed in numerous UDRP actions. These decisions are located online at http://www.icann.org/udrp/udrpdec.htm.”

UDRP is an acronym for Uniform Domain-Name Dispute-Resolution Policy. Under this policy, most trademark-based domain name disputes are resolved by agreement, court action, or arbitration hearing before a registrar will cancel, suspend, or transfer a domain name.

Disputes alleged to arise from abusive registrations of domain names may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.

To invoke the UDRP, a trademark owner should either file a complaint in a court of proper jurisdiction against the domain holder, or, in cases of abusive registration, submit a complaint to an approved dispute-resolution service provider.

The screenshot below displays the Cease and Desist order sent by Google to the owner of the Googlecalendar.com domain name.

2. Eliminate or mitigate defamatory sites
The most obvious example is “Yourcompanysucks.com” There are a handful of companies who have not learned how to address these defamatory customer complaint sites. The #5 result in Google for the search “Allstate” is Allstateinsurancesucks.com. The #7 result in Google for the search “University of Phoenix” is UOPsucks.com. The #4 result in Google for the search “Paypal” is Paypalsucks.com. You get the picture.

Note: Depending on your industry, it may be a mistake to actually pursue legal action and trigger an onslaught of unwanted media attention. Learn how to eliminate or mitigate the prominence of these sites with our Brand Command methodology.

In the example below we take a look at a Cease and Desist order sent by Mass Mutual to the owner of the MassMutualSuks.com domain name.

3. Confront Typo-Squatters
Typo-Squatters seek to benefit from the brand traffic of frequently searched organizations. Under the Anticybersquatting Consumer Protection Act (ACPA), Typo-squatters shall be held liable in a civil action by the owner of a mark if the party has a bad faith intent to profit from registration of the trademark as a domain name and registers, traffics in, or uses a domain name that is identical or confusingly similar to another party’s trademark or dilutes a famous trademark.

Under the Act, the trademark owner can recover damages of $1000 to $100,000 per domain name registration.

The screenshot below displays the Cease and Desist order sent by American Express to the owner of the Amer8canexpress.com, Amer9canexpress.com, Amerian4xpress.com, Americajexpress.com, American3xpress.com, Americanexprese.com, and Americanexpresx.com domain names.

Domain name assets are critical to a company’s operations and brand reputation online. Many frequently searched brands employ a strategy called “defensive” domain name registration, where a business or organization registers its trademarks and brand names as domain names, including variations thereof, such as “Companysucks.com,” “Companyproblems.com,” etc.

Phonetic and typographical misspellings are also candidates and defensive registration is typically commissioned on all major top level domains, such as .com, .net, .org, .biz, etc.

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