It Could Happen To You - Part 2
By Elena Fawkner
Posted Sunday, November 21, 2004
3. KNOW YOUR RIGHTS
=> Domain Name Registrations Generally
As a general rule, you can register any domain name that is not already registered (subject to trademark considerations discussed below). If your domain name is sufficiently distinctive, for example, jtdbizopps.com, the bit before the .com may also be a common law trademark (unless, of course, it’s registered and then it’s a registered trademark). If you DO have a distinctive domain name, then the discussion in the next section applies to you.
If you don’t have a distinctive domain name, however, and by this I mean a name that is “descriptive” or in general usage, for example, “home-business.com”, then this name will be neither a common law trademark nor a registrable trademark.
In this case, once you’ve lost your domain name registration, you are, not to put too fine a point on it, screwed. You don’t have much in the way of recourse other than for the “generic” legal avenues which may well be too expensive for you to pursue. These avenues are discussed below.
=> Domain Names and Trademarks
On the other hand, if you have a distinctive domain name (i.e., one that is not in common usage), then that name is also likely to be a common law trademark (unless, as stated above, you’ve registered it, in which case it’s a registered trademark. And, if you do have a common law trademark, I would recommend that you register it. Registration can only strengthen your position.)
The law generally sides with the pre-existing trademark owner over the domain name holder. In addition, the U.S. has enacted the federal Anti-Cybersquatting Consumer Protection Act (the “Act”). Under the Act, you can sue a cybersquatter to get back your domain name and sometimes damages to boot. So, what’s actionable under the Act? Here’s an extract from the Act itself:
“A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark ... if, without regard to the goods or services of the parties, that person
(i) has a bad faith intent to profit from that mark ...; and (ii) registers, traffics in, or uses a domain name that
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a [registered] trademark ...”
In terms of what constitutes “bad faith”, the Act provides that the court may consider factors (among others) such as:
“The person’s [i.e., the alleged cybersquatter’s] intent to divert customers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; and
“the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct.”
A common problem is identifying the culprit. In Jan Tallent- Dandridge’s case, for example, the only information about the perpetrator is:
offers@NameRegister.com
Registrant:
Dave Web (JTDBIZOPPS-COM-DOM) Buy This Domain
5 Tpagrichnery St ., # 33
Yerevan, Armenia 375010
AM
208.978.3555
208.978.3555
offers@NameRegister.com
Call me skeptical, but somehow I doubt that’s a real name and address. Fortunately, the Act has anticipated this problem:
“The owner of a mark may file an in rem civil action against a domain name [an “in rem” proceeding is an action against the thing rather than against a defendant - in this context, it means that the court can make an order in relation to the domain name itself rather than against Dave Web personally such as ordering him to surrender the domain name] ... “.
And as for remedies, assuming you are able to identify your particular scumbag, these include injunctions and damages (either actual or, in a case where your individual name is at issue, statutory damages of between $1,000 and $100,000 per domain name).
=> Generic Legal Avenues
Whether or not you can pursue an action under the Act, there are a number of legal avenues open to anyone in Jan’s situation (and by that, I mean, someone who is using the domain name to point to a site that damages your reputation).
First off, let’s recognize this practice for what it is. Extortion. Pure and simple. It’s a crime. So is criminal defamation. Write a strongly worded cease and desist letter to the offender, threatening to report them to the District Attorney and/or the police and the Federal Trade Commission as well as instituting a civil suit. You are more likely to get a result if the letter comes from your attorney.
If the offender doesn’t comply, report them. As for what action will be taken, your guess is as good as mine but at least you’ve done what you can.
If you have the resources to do so, you can also bring civil proceedings against the offender on the same grounds. The conduct in question is egregious enough that you may well get punitive damages awarded in your favor.
Finally, and I HATE to even suggest this, the most cost-effective option of all may be to pay what is demanded. That at least gets the domain name back under YOUR control where it belongs. And there’s nothing to stop you turning around and reporting the individual in question to the DA, police, FTC etc.. In fact, paying over the money may be your best chance of identifying the perpetrator so you can initiate a criminal prosecution.
Of course, all of this is damage control which is a VERY poor substitute for prevention. So go back to Item 1. and calendar your domain name due dates to avoid getting into this mess in the first place.
About the Author
Elena Fawkner is editor of A Home-Based Business Online ... practical home business ideas for the work-from-home entrepreneur. (http://www.ahbbo.com/mmp/sub.cgi?AHBBO=!FLM)
