Summary. Every step, in the order that keeps you from losing.

Phase 1 — Diagnose the situation

  • Which of these is it?
    • Cybersquatting — a third party registered a name matching your mark
    • Legitimate prior holder — registered before your rights existed
    • Lapsed registration — you let it expire
    • Account compromise — unauthorized transfer
    • Former insider — employee, agency, developer, distributor
  • Establish three dates: when your trademark rights began; when the domain was first registered; when the current registrant acquired it.
  • If the domain predates your rights, stop and reconsider. A cybersquatting complaint will fail and may draw a reverse hijacking finding.

Phase 2 — Establish your rights

  • Trademark registration certificate, with registration and first-use dates.
  • Evidence of first use in commerce if relying on common law rights.
  • Evidence of the mark's strength: sales, advertising, media, recognition.
  • Confirm the mark predates the domain registration.
  • Identify any prior coexistence agreements or third-party rights in the term.

Phase 3 — Build the record BEFORE contact

  • Current WHOIS record, captured with date.
  • Historical WHOIS showing prior registrants and transfer dates.
  • Registration and expiration dates; registrar of record and its location.
  • Archived screenshots from the Internet Archive across the full period, saved locally.
  • Current site screenshots with visible URL and date.
  • DNS and nameserver records.
  • Reverse-WHOIS by email, name, organization, and nameserver.
  • List of other names held by the same registrant, flagging brand matches.
  • Site content analysis: payment endpoints, analytics IDs, chat widgets, reused templates.
  • Prior UDRP decisions against the registrant name or email.
  • Registrant location and any evidence of assets.
  • Any offer to sell, with the asking price and date.
  • Evidence of actual confusion — misdirected emails, customer reports.

Failure mode: sending a letter first, and watching the name move offshore before the evidence is captured.

Phase 4 — Decide whether to contact

  • Contact first if the registrant may be legitimate, if the name predates your mark, or if purchase is the likely outcome.
  • File first if the registrant looks like a serial squatter — cyberflight is the risk.
  • If contacting about price, use a broker so the buyer's identity does not set the price.
  • If active fraud is occurring, file registrar and host abuse reports immediately, in parallel with everything else.

Phase 5 — Choose the procedure

If you want Use
The name, quickly, cheaply UDRP
The name plus damages, and defendant is reachable ACPA in personam
The name where registrant cannot be found or served ACPA in rem (no damages)
Rapid suspension only, in a new gTLD URS
To resolve with a legitimate holder Negotiated purchase
  • Confirm the top-level domain is subject to the UDRP; ccTLDs have their own policies.
  • Assess collectability before choosing litigation.
  • Confirm whether consolidation of multiple names is available.

Phase 6 — UDRP preparation

  • Element one: mark rights established; identical or confusingly similar shown; additions and typos addressed.
  • Element two: no authorization; not commonly known by the name; no bona fide offering; not legitimate noncommercial or fair use; anticipated defenses addressed.
  • Element three: registration and use in bad faith, with evidence for each:
    • Offer to sell above out-of-pocket cost
    • Pattern of blocking registrations (reverse-WHOIS)
    • Disruption of a competitor
    • Confusion for commercial gain (parking with competitor ads)
    • Concealed or false contact information
    • Knowledge of the mark from content, targeting, or timing
    • Passive holding where no good-faith use is conceivable
  • Consolidation record built: shared nameservers, contacts, templates, sequential registrations.
  • Provider selected; supplemental rules reviewed.
  • Single or three-member panel decided.
  • Mutual jurisdiction specified.
  • Remedy requested is transfer, not cancellation.
  • Word and annex limits confirmed.

Phase 7 — ACPA preparation

  • Cybersquatting count under 15 U.S.C. § 1125(d).
  • Infringement count under 15 U.S.C. § 1114 for registered marks.
  • False designation count under 15 U.S.C. § 1125(a).
  • Dilution count under § 1125(c) if the mark is famous.
  • Nine bad faith factors addressed individually.
  • Statutory safe harbor anticipated and foreclosed.
  • Personal jurisdiction analyzed; in rem evaluated only after identification is exhausted.
  • Venue confirmed under 28 U.S.C. § 1391, or registrar location for in rem.
  • Statutory damages election deferred until after discovery.
  • Fee exposure under the exceptional-case standard assessed in both directions.
  • Collectability assessed and documented for the client.

Phase 8 — The other four situations

Lapsed registration

  • Determine the current status: grace, redemption, pending delete, or re-registered.
  • If in grace or redemption, pay immediately — the fee is far cheaper than the alternatives.
  • If pending delete, engage backorder services.
  • If re-registered, evaluate purchase or whether the new registrant's conduct is actionable.

Account compromise

  • Contact the losing registrar's abuse and security team immediately.
  • Contact the gaining registrar with evidence of unauthorized transfer.
  • Preserve account logs, notification emails, and transfer records.
  • Secure email, DNS, hosting, and payment accounts.
  • Report to law enforcement; unauthorized access implicates 18 U.S.C. § 1030.
  • Prepare emergency relief papers if registrars will not act.

Former insider

  • Locate the governing agreement and any IP or account assignment provisions.
  • Plead breach of contract, fiduciary duty, and conversion.
  • Plead infringement if the name is used for competing goods.
  • Seek a mandatory injunction directing transfer.
  • Do not rely on cybersquatting theories — registration was authorized.

Negotiated purchase

  • Value the name honestly against the cost of a proceeding.
  • Use a broker.
  • Confirm the WHOIS registrant is the negotiating party.
  • Use escrow.
  • Document transfer mechanics, authorization code, deadline, fees, and failure remedies.
  • Include assignment of goodwill and a no-conflicting-grants representation.
  • Plan for existing email addresses, inbound links, and forwarding.

Phase 9 — Respondent side

  • Establish your timeline first — if your registration predates the mark, lead with it.
  • Document legitimate interest: prior bona fide use, commonly known by the name, personal name, descriptive use, noncommercial criticism.
  • Show independent derivation of the name.
  • Do not transfer the name after notice. It reads as cyberflight.
  • Consider requesting a reverse domain name hijacking finding.
  • If a transfer is ordered, calendar the ten-business-day window for filing suit in a court of mutual jurisdiction.
  • Evaluate a claim under 15 U.S.C. § 1114(2)(D)(v) for a declaration that the registration is lawful.

Phase 10 — Prevention

  • Domains registered in the company's name, in a corporate registrar account with role-based access.
  • Auto-renew enabled with a valid payment method.
  • Contact records use a monitored role address, not an individual's mailbox.
  • Registrar lock on all names; registry lock on critical names.
  • Defensive registrations: primary mark in .com and operating-market ccTLDs; common typos; hyphenated forms; significant product brands.
  • Watch service across gTLDs and key ccTLDs, alerting to a monitored address.
  • Triage rule so clear abuse goes straight to a UDRP without a letter.
  • Trademark Clearinghouse recordation.
  • Contract flow-down requiring assignment of domains, social handles, app listings, and ad accounts on termination of any agency, distribution, or development agreement.
  • Recovered names moved into the portfolio and renewed, not allowed to lapse.
  • Annual audit reconciling the registrar account against the trademark portfolio.
  • Customer-facing verification procedure for payment instruction changes.

Related documents