[E-trademarks] Typosquatting remedies

Wed Mar 6 09:32:24 EST 2024

In my experience, if you have evidence of the domain name being used for phishing, most registrars will suspend the domain name if you submit an abuse complaint through their regular abuse reporting channel.  If they don’t you can submit a complaint to ICANN compliance (or threaten to do so) and this may spur them to take action.  Note though that some registrars will require a sample phishing message as an attachment (as opposed to just a forward).  They claim to do this so that they can analyze the email headers in the message and confirm that the email address was not spoofed in the phishing email message.  Of course this is often ridiculous as who would spoof a typo domain in the email message, but it is what it is.  Once the domain name is suspended (typically by the registrar putting it in ClientHold or ServerHold status) the domain name can no longer be used for content or email and cannot be transferred to another registrar.  That said, I still agree that you should file a UDRP complaint after the domain name is suspended to recover the domain name as otherwise when it expires it can be registered by a third party (or the same bad actor) to be used again for nefarious purposes.

The real challenge is when you find the typo domain name that has MX records so is set up for email use but you don’t have any phishing messages.  In that case most registrars will not take action and your only recourse (short of litigation) is generally a UDRP complaint.

Marc H. Trachtenberg
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Chair, Internet, Domain Name, e-Commerce and Social Media Practice
Greenberg Traurig, LLP
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of doug--- via E-trademarks
Sent: Tuesday, March 5, 2024 3:23 PM
To: 'For trademark practitioners. This is not for laypersons to seek legal advice.' <e-trademarks at oppedahl-lists.com>
Cc: doug at giga.law
Subject: Re: [E-trademarks] Typosquatting remedies

*EXTERNAL TO GT*

It depends -- on the facts and the registrar.  Many registrars are reluctant to take action against their own customers and instead will tell you that the appropriate approach is to file a UDRP complaint.  However, in egregious, well-documented, clear-cut cases (and perhaps I should find even more qualifiers to add here!), some registrars will actually enforce their own policies and suspend or terminate a domain name registration.  For example, Namecheap (just to cite one popular registrar) has a registration agreement that forbids registrants from using domain names "to impersonate another person or company," and the agreement gives Namecheap "the right" -- but, notably, not the obligation -- to suspend and/or delete your registered name as a consequence of engaging in activity contrary to applicable law and any related procedures."

So, contacting the registrar may be worthwhile.

However, note that even if the registrar takes action, the issue is not necessarily resolved, if the registrant can simply take its domain name registration to another registrar.  So, a UDRP complaint may still be necessary.

Finally, from a technical perspective, your client and employer could block incoming emails from the problematic domain name, which could prevent further issues internally, at least.

Douglas M. Isenberg | The GigaLaw Firm
Attorney at Law
Phone: 1-404-348-0368
Email: Doug at Giga.Law<mailto:Doug at Giga.Law>
Web: www.Giga.Law<https://urldefense.com/v3/__http:/www.giga.law/__;!!DUT_TFPxUQ!HhzHTtEJf3SckLtEzr9pH_0F6nUDkHfzhfFa3BXyb4zKjCPsYqW2ilIdPObhTiSZWwmfywm7SoFoxpPYLp0L7z9i-gqtu0EQ$>

-----Original Message-----
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Terry Carroll via E-trademarks
Sent: Tuesday, March 5, 2024 1:52 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Cc: Terry Carroll <carroll at tjc.com<mailto:carroll at tjc.com>>
Subject: [E-trademarks] Typosquatting remedies

What remedies are available, other than a full-blown UDRP, against a typosquatter?

I'm in-house counsel. My client and employer has been hit with someone impersonating one of our employees using a typosquatted domain that looks very similar to one of our legitimate domains.

I'm interested in getting that domain off the air as quickly as possible.

There doesn't seem to be any web presence, it's strictly email, so it's the domain itself I want to target.

Any suggestions? Does a mere letter to the domain registrar, with documentation of the scam, usually get action? In this case, it is a .com domain.

--

Terry Carroll

carroll at tjc.com<mailto:carroll at tjc.com>

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