Turns out being John Malkovich isn’t all it’s cracked up to be.
One of the first thing all new businesses do today is register a domain name. Oftentimes the selection of the online identity even figures significantly into choosing the name of the business itself. But what if you’ve already selected the perfect name only to find out someone already has it registered? You actually have a lot more options than you probably think.
Option 1: Is It For Sale?
Seems obvious and intuitive, right? Well, it may be a bit more complicated than you think. If the domain registrar’s site (like godaddy.com) says the name is not available, the next step is to pay a visit to the site. If the address doesn’t lead anywhere or what you see doesn’t look like a legitimate business there is a good chance you and the owner can make a deal. If, however, it looks like someone is legitimately using the site it may be time to move onto the other options.
Next — finding the owners. You can do this by conducting a Whois search on ICANN’s website (ICANN is the governing body of the internet and stands for the Internet Corporation for Assigned Names and Numbers). The search results will either provide the contact information for the owner (or registrant) or designate that the owner has elected to use a privacy shield. In most cases, this is the time to call in the professionals. Many registrars offer a brokerage service where they will reach out to the owners of the name you want and try to make a deal. While this is usually going to be accompanied by a fee, an experienced, impartial party is more likely to commence a deal than someone who is emotionally involved.
If the broker is able to make a deal, your business is off and going. If the broker can’t make a deal, consider the following options.
Option 2: Pick a New Name
It sounds so simple, but in practice, unless you’re brainstorming and searching godaddy.com at the same time, you’ve probably already invested something in your company’s name, even if it’s only emotionally. However, in some circumstances it may be the right move, though if you’ve already invested in the business name, probably only as a last resort.
Option 3: Pick a New gTLD
Sure, everyone expects a web address to end in ‘dot-com,’ but what if I told you it didn’t have to. Today there are literally over a thousand other options. While none carry the same cultural weight as ‘dot-com,’ they are usually cheaper and certainly more widely available than ‘dot-coms.’ These so called ‘not-coms’ can also give customers more information about your business. For example, if I registered ‘catherine.plumbing’ it would be clear that this site is affiliated with Catherine the plumber, not Catherine the electrician. With so many options, it is unlikely your company’s name is taken in every single one, and you can probably even find something that represents your business better than a ‘dot-com’ could.
One potential drawback to this option is that people are unfamiliar with these new ‘not-coms’ and are potentially skeptical of their legitimacy. However, because there are a limited number of ‘dot-com’ addresses available, eventually internet uses will come to accept these new endings and selecting one now could put you ahead of the curve.
Option 4: UDRP
At this point, poor John Malkovich still might not have found any relief, so we turn to legal remedies. ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) provides that if someone has, in bad faith, registered your trademark, or something confusingly similar to your trademark, and that person does not have any legitimate interest in the domain name you may bring a claim of cybersquatting in an administrative proceeding against them in order to recover the domain name, but not monetary damages. The most difficult portion of this test to satisfy is the requirement that the domain was registered in bad faith. To prove this, the UDRP directs the administrative panel to look to facts that indicate:
• the individual has registered the domain with the purpose to sell the name to the owner of the trademark for more than the original cost
• the individual registered the name in order to prevent the owner of the mark from obtaining the mark
• the individual registered the name in order to disrupt a competitor’s business, or
• the individual has used the name to attract internet traffic away from the trademark holder’s site by creating confusion about the true source of the site.
This means that a competitor who registers your company’s name (or something confusingly similar), in which you have either common law or statutory trademark rights, can be forced to hand it over. The UDRP also protects against, so-called, domain trolls. These trolls buy up domain names with the intent to sell them to legitimate users for exorbitant amount.
Once you conclude that you have been the victim of cybersquatting (hopefully after consulting an attorney), you must complete a UDRP Complaint and file it with the World Intellectual Property Organization (WIPO). The WIPO has available a model complaint that can serve as a guide to your filing. If the complaint is not deficient the registrar will put a lock on the domain name and a trial will be held before a panel of moderators, who will determine the winner. While this process is considerably faster and less expensive (because it is arbitration, not litigation), the most the WIPO can do is transfer to you the domain name, it cannot award monetary damages.
Option 5: ACPA
The Anticybersquatting Consumer Protection Act (ACPA) (15 U.S.C. §1125(d)) provides relief in very similar situations as the UDRP. As under the UDRP, one must show that the registering individual’s registration was in bad faith, the infringed trademark was distinctive, and that the domain name was the trademark exactly or just confusingly similar. When determining whether the domain name has been registered in bad faith, the statute directs courts to look to many more factors than the UDRP does. Because the statute does not limit the appropriate evidence for determining bad faith, a judge may consider basically anything deemed relevant. If, however, the registrant had a reasonable belief that her use was fair use or otherwise lawful the statute precludes a finding of bad faith.
The most significant advantage of pursuing a claim under the ACPA is that the judge is able to award monetary damages. However, this method is almost certainly going to take longer and cost more than a proceeding under the UDRP. Because of these costs this option should almost always be a last resort.
By now you have learned more about domain names than you ever wanted to know. But hopefully you’ve also learned the importance of protecting your company’s name online and what you can do if your protections fail.