JOURNAL OF COSMETIC SCIENCE 412 It is only when domain names are registered after the corresponding trademarks are in commerce that there is question whether the domain name holder had actual knowledge of the trademark and is surreptitiously taking advantage of its potential attractive power. The suspicion alone coupled with the content of the website is suffi cient to commence a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding, but if trade- marks lack priority in commerce, i.e., where domain name registrations predate trademark acquisition, there can be no actionable claim for cybersquatting regardless whether domain names correspond to trademarks. There are a couple of takeaways: • Not every domain name identical or confusingly similar to a trademark supports an actionable claim. • It is not suffi cient to allege cybersquatting, it has to be proved, which requires evidence the trademark owner actually has a right, the domain name holder lacks either right or legitimate interest in the domain name and has registered and is using it in bad faith. • Where domain names are unlawful, the registrations can either be cancelled or transferred to the trademark owner by using an online dispute resolution procedure known as the UDRP that the Internet Corporation for Names and Numbers implemented in 1999. OVERREACHING BY THE TRADEMARK OWNER Again, inevitably, frustration has led some trademark owners with newly created rights to proceed incautiously to capture domain names, but here the business/trademark owner has to be careful. Abusing the arbitral proceedings carries little penalty, except forfeiture of the domain name. However, if the action is carried further to U.S. federal court under the Anticybersquatting Consumer Protection Act (ACPA), there can be signifi cant money damages against the trademark owner. This problem is less understood, but there are cases now coming down that businesses and trademark owners should be aware of. While incaution is essentially inconsequential under the UDRP for the reasons I have stated, the consequences can be very severe under the ACPA in which damage awards are granted equal in amount for either party based on proof of a domain name holder’s infringement or a trademark owner’s reverse domain name hijacking up to $100,000. One takeaway from this is that overreaching rights can come at a cost in damages and attorneys’ fees. Two recent ACPA actions in the U.S. federal courts commenced by losing domain name holders in UDRP proceedings illustrate the risk of attempting reverse domain name hijack- ing. In both cases, in the Federal District Court for the District of Columbia and the District Court for the District of Colorado, respectively, the trademark owners prevailed in UDRP proceedings although neither had priority of registration. Once the lawsuits were fi led, both trademark owners quickly entered into stipulated settlements and con- sent judgments for $25,000 and $50,000, respectively, including permanent injunctions. The defendant trademark owners made these settlements for good reasons, namely their claims were indefensible even though they prevailed at the UDRP level. Once dragged into federal court they had no choice because overreaching is indefensible and to defend such an action in federal court would have been a waste of time and resources as well as

COMPETING FOR DOMAIN NAMES IN THE COSMETIC INDUSTRY 413 exposing them to damages as much as $100,000 plus reasonable attorney fees for their wasted efforts. The last takeaways are as follows: • Buying, selling, and monetizing domain names are not unlawful activities. • If the most desirable domain name is held by a party with priority, “be creative” in choosing the right moniker that works both as a trademark and a domain name. • When deciding on a trademark always make sure the domain name is available fi rst. • When deciding on a domain name always make sure the trademark is available. And, fi nally, this area of the law is very specialized. Consult counsel with trademark and Internet knowledge to be sure you are right. Gerald M. Levine is an intellectual property and Internet attorney. He is the author of the newly published and highly acclaimed defi nitive guide, Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting. The book is available from Amazon.com and Barnes & Noble. “It is an important and incredibly helpful guide for trademark owners, domain name registrants and their legal representatives,” Doug Isenberg, Domain Name attorney and UDRP panelist. The E-book edition is available from September 1, 2015. Purchasers of the book will also have free access to the ongoing supplement.