Recently, a slew of inquiries have crossed my desk regarding domain ownership: everything from dealing with cybersquatters, to those who are attempting to impermissibly use a distinctly similar domain to others, even hostile takeovers of a domain/business. Here are answers taken directly from responses to client questions that will pertain to all online business owners:
How is ownership of a domain established? Registration, Renewal, Purchase (public or private), or Transfer.
- Registration: First, determine if your domain is a top-level domain (gTLD or ccTLD) (Generic top-level domain), as a“.com”. A registry is the operator of a TLD and is responsible for maintaining the database of all domain name registrations and their associated IP addresses. A registrar sells domain registrations to end users and, traditionally, provides various other services. The Internet Corporation for Assigned Names and Numbers (ICANN) is a non-profit corporation that is the
governing body and was created to determine policies for establishing new TLDs, maintaining the domain name system, selecting domain name registrars, and devising policies for handling disputes related to domain names.
- Renewal: Registration is done for a specified number of years (one year minimum and ten year maximum) and, if not renewed, the domain will expire, and become available for anyone to purchase. Autorenewal is available. At its most basic level, to register a domain name, one visits the website of a registrar determine whether the desired domain name is available, provides basic information, pays the registration fee, and then becomes the owner of the domain name.
WHOIS contains domain registry information for “.com” websites. If you are attempting to look up info regarding a domain, this is the first place to look.
- Transfer. Self explanatory, “transfer” occurs during sales, etc.
What happens when someone tries to steal my domain/sue me/commit intellectual property infringement?
This is the chief concern clients raise when coming to me for domain-related questions, and for good reason. Jumping to litigation is typically not conducive (or warranted) for most small business owners, but luckily, there are built-in dispute resolution remedies available.
Dispute Resolution: The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is currently mandatory for all ICANN-accredited registrars and to all the main gTLDs (.com). Additionally, the particular registrar may have clauses in the contract with the domain owner to follow specific
policies or use a specific arbitrator (such as WIPO or FORUM) in the event of a dispute. Furthermore, dispute proceedings arising from alleged abusive registrations of domain names may be initiated by a holder of trademark rights (including unregistered/common law trademark owners). The UDRP is included in registration agreements for all ICANN- accredited registrars. There is a federal cause of action under the Anticybersquating Consumer Protection Act (ACPA), 15 U.S.C. §1125(d) and the federal dilution law of 15
U.S.C. §1125(c). However, these causes of action only apply to trademarked materials. Further distinguishing the UDRP and 15 U.S.C. §1125(c) and (d) is that in the UDRP the only remedy that a successful complainant can receive is a transfer of the disputed domain name; however, under 15 U.S.C. §1125(c) and (d) damages up to $100,000 per domain name, injunctive relief, and attorney’s fees can be awarded. Moreover, mere registration of
a domain name is not sufficient for the domain to function as a trademark; the domain name must function as more than an address for the location of an internet website in order to warrant the protection of the trademark laws.
Do these protections extend to unregistered (common law) trademark owners?
Most likely- assuming, of course, that the business owner is in fact the rightful owner of common law (unregistered) trademark rights. Under
the Lanham Act, the holder of a common law trademark proves he or she is the rightful owner of the trademark by:
- Proving she/he was the first to use the trademark in the market;
2. The trademark is valid, registered or not;
3. The other party wanted to confuse customers.
The Plaintiff carries the burden of proof. Additionally, the Plaintiff may be able to take the infringer to court, but only if:
- He can successfully prove the mark is a valid trademark (a distinctive name used in connection with commerce).
- The infringer lives in another state;
- The amount of damages in question is greater than $75,000.
According to the WIPO, unregistered trademark rights are sufficient to support a complaint under the Policy. Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) deals with the question: “What does a complainant need to show to successfully assert unregistered or common law rights?” The first two paragraphs of the answer are as follows:
- “To establish unregistered or common law trademark rights for purposes of the UDRP, the
complainant must show that its mark has become a distinctive identifier which consumers
associate with the complainant’s goods and/or services.
- Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary
meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the
amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the
degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
- Ensure that you still own your domain in accordance with step #1 (i.e., have you renewed your domain when needed?)
- If any dispute arises regarding your domain, research all available dispute resolution options available to you under ICANN.
- You will never have presumptive rights to your brand name without a registered trademark, meaning, you will always have an uphill battle. However, even if you have not registered your trademark, you may have common law rights available under the law- and it’s critical that you take all steps available to protect your name.