Mastering Your Domain

Mastering Your Domain

I still remember the first time I logged onto the Internet.  Several of us were at a friend’s apartment that had just brought home a brand new Power Macintosh 8500.  After getting all the specifications and protocols set, my buddy clicked on the Netscape Navigator icon and off we went.  He entered his username and password, hit “return,” and out from the back of the computer came the glorious sound of a telephone dialing followed by a loud noise resembling a fax transmission.  We were on.

We typed one of the few web addresses that we were aware of at the time and waited in eager anticipation for the magic to happen. 

And we waited. 

And waited. 

*crickets chirping* 

And waited. 

After a minute or so some text had appeared and a picture was obviously attempting to load, one line at a time, each new line appearing about every 5 or 10 seconds.  After a couple minutes we could just make out what the picture was.  Little did we know that the world was changing right before our eyes.   

The early days of the Internet were like a digital Wild West.  A free-for-all hodge podge of random information.  There was no ebay.  No amazon.  And yahoo! was still a southern expression of excitement.

It was also a time when a few savvy opportunists realized that these new so-called domain names were not unlike real property in the sense that each was one-of-a-kind and may have real value to the right buyer.  These domain name speculators came to be known as cybersquatters, and some were extremely successful.  For example, wallsteet.com sold for $1 million, altavista.com sold for $3.3 million and business.com sold for $7.5 million.  Internet statistic site dotcom.com reported that at one point 41% of domain names registered were still “parked” a year later.

An even greater problem arose when cybersquatters purchased domains in the name of popular trademarks for the purpose of holding the domain hostage or piggybacking on the popularity of the trademark.  For example, the domains whitehouse.com, madonna.com and numerous other domains based on popular terms were once pornographic websites.  This has prompted many companies to purchase literally thousands of domains to head the cybersquatters off at the pass.  Verizon is reported to own more than 10,000 domains and Microsoft more than 24,000.

In 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) was created to perform various tasks related to improving and preserving operational stability on the internet, namely managing the assignment of domain names and internet protocol addresses.  In 1991, ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) which provides a relatively basic process for challenging a domain owner’s rights to a given domain.  When a person registers a domain name, he or she must consent to be subject to the UDRP.

For all practical purposes, the UDRP is designed to protect persons who own a trademark.  A complainant in a UDRP proceeding must establish three things in order to invalidate a previously registered domain name:

  • That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • That the registrant does not have any rights or legitimate interests in the domain name; and
  • That the registrant registered the domain name and is using it in "bad faith."

“Bad faith” can be demonstrated by a showing that:

  • The registrant registered the domain name primarily for the purpose of selling it to the owner of the mark (i.e., the complainant),
  • The registrant has a history of registering domain names containing marks for the purpose of preventing the owners of the marks from registering the corresponding domain names,
  • The registrant registered the domain name primarily for the purpose of disrupting the business of a competitor, or
  • The registrant has intentionally attempted to attract traffic to the registrant's website by creating a likelihood of confusion with the complainant's mark.

What this ultimately means is that if a person registers a domain that is confusingly similar to a trademark, and the person has no legitimate interest to a domain by that name, then that person’s registration can be canceled.

Has this happened to you? Do you have a brand, slogan or mark that someone has registered and is now holding hostage?  Is someone holding a domain name of your trademark hostage?  Or is someone using a domain name to divert customers away from you?  If so, please give the Waterford Law Group a call as soon as possible.  Solving the problem could be as easy as a forceful demand letter.  If not, a UDRP action described above may be necessary.  Either way, we'd love to talk to you about your options and to aid in protecting your increasingly important web presence, web reputation and intellectual property.

 

ObservationsKurt Beasley