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Protecting your Digital Trademark Without Litigation

Picking a Domain Name

Photo by: http://www.anna-OM-line.com

Whether you’re a business owner just setting up your online corporate prescience, or are an online veteran looking to flex your web muscle, you likely have encountered at least a domain name or two which are crucial to your brand but have already been taken. Be it the .com or even .org version of your company name, or even a broad term such as WidgetProfessioanals.com – not having an effective domain is the digital equivalent of a storefront without signage.

Before continuing there are two crucial terms to keep in mind before going further.  The first is cybersquatting, which for purposes of this article is defined as “the action of registering, selling, or using a domain with the intent of profiting from the goodwill of another party’s trademark.” The next term is typosquatting, which involves registering domains similar to an existing brand or trademark with the exception that the domains contain typos so they divert traffic from the original trademark holder when users mistype the website name.

During the dot com boom cybersquatting was rampant as speculators snatched up domains of major companies such as Microsoft, Motorola, and even the former web-giant Yahoo. In turn these victims filed numerous lawsuits, which resulted in long periods of litigation and in some cases large payouts to the original domain holder. The CNN piece titled  ‘Cybersquatters:’ Invading big names’ domains provides a larger set of examples, however since 2000, cybersquatting has become less of an issue due to improvements in dispute resolution (discussed shortly), and web savvy business owners now purchasing all the essential domains relating to their company before ramping up their online presence.

On the other hand, typosquatting has remained a common issue for virtually any website owner. Unlike cybersquatting, which can be prevented by purchasing all the domains pertaining to your trademark, typosquatting involves snatching misspelled domains which are very similar to popular websites. A common characteristic of typosquatted domains is a page filled with keywords related to the misspelled website, or even pages offering a search bar to “find what you were looking for.”

For the most part typosquatting is difficult to prevent because typosquatters use automated tools to register hundreds (or in some cases thousands) of domains within a short period of time (often over a few days) and then after a short time dump the domains which don’t attract enough traffic. This allows the squatters to test domains en masse without having the obligation of paying full price for the domains that are not effective.

Although most people associate business disputes with lawyers and dragged out court cases, the majority of domain disputes are solvable without an attorney. The solution lies in using the Uniform Domain Name Resolution Policy (UDRP), a policy enacted in 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN). For those unfamiliar with the role of ICANN, the organization is an international governing body in charge of handling the issuance of .com’s, .net’s, .org’s, and approximately 65 country level domains of which the sponsoring countries have adopted UDRP policies.

As ICANN has international jurisdiction, if you find a domain or site that is clearly in violation of your trademark or brand rights, you can file a complaint, which if accepted, will be reviewed and evaluated by a panel of arbitrators who will either approve or reject the claim. Regardless of the defendant’s location, claims often are processed without issue as long as the domain in question falls under the UDRP policies, with verdicts often being delivered within a few weeks. The primary caveat to this remedy is that unlike litigation, the UDRP does not allow for punitive damages. Rather, the UDRP provides a fairly streamlined method for allowing business owners to protect their branding rights without having to shell out extravagant retainer fees for counsel.

In the interest of keeping this piece at a reasonable length, I’ll provide a very basic overview of the criteria commonly used to tell if a website is infringing on your rights. For a full overview of the UDRP process and the statistics showing its effectiveness over traditional litigation the ICANN Dispute Resolution section of their website provides a wealth of information written in fairly simple language.

In a nutshell the key criteria required for ICANN to consider action against a domain holder are:

  1. Your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  2. You have no rights or legitimate interests in respect of the domain name; and
  3. Your domain name has been registered and is being used in bad faith.

If all three of the above are applicable to a domain in question, you might be eligible for legal recourse via the UDRP rather than having to pursue litigation. As mentioned earlier however, the UDRP does not allow for monetary damages to be awarded, and there is no guarantee that you will receive a favorable outcome. The above criteria is simply pulled from the ICANN website and is geared towards general legal cases.

If you find yourself in a position where you feel you are a victim of cyber or typosquatting, it is best to consult an intellectual property attorney to discuss the options available. In some cases however it might be beneficial to simply contact the domain owner directly and ask if you can purchase the domain from them. While this might seem counterintuitive, sometimes paying a couple hundred or even a couple thousand is well worth the savings in legal fees, time commitments, and other constraints which can cause you to lose focus on the core fundaments of your business.

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About Charles Costa

Charles Costa is the owner of CJC Digital, LLC (http://cjcDigital.com). A web development firm focused heavily on the technical side of website coding and management plus technical writing services. In addition, CJC Digital also works heavily with emerging technology ventures to help new ideas get to market more effectively.

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