Protecting Your Domain NameAdded by Bradlee R. Frazer in Articles & Publications, Business Law, Intellectual Property and Patent Law on April 17, 2015
According to a WHOIS lookup performed at domain name registrar fabulous.com on April 2, the registrant of microsoftsucks.com is an entity named “Secaucus Group, Inc.,” and the listed “administrative contact” for Secaucus Group Inc. is someone named Dan Parisi. Secaucus Group has been the ostensible registrant of that domain since May 21, 1998. Similarly, according to a WHOIS lookup performed on April 2 at domain name registrar GoDaddy.com, “Chong Sam Lee” of Ontario has been the ostensible registrant of applesucks.com since February 23, 1999.
There are many ways for disgruntled ex-customers to say bad things about you on the Internet, like RipOf-fReport.com, Complaints.com and even Facebook, but there’s something about the intimacy of having [yourbrand] being right in there next to “sucks” that makes this more personal—and problematic.
So why can’t Apple and Microsoft wrest control of these domain names away from Parisi and Chong Sam Lee? The most likely answer is that neither Parisi nor Chong Sam Lee have done anything wrong under United States domain name law that would give Apple or Microsoft a legal remedy. Dan Parisi and Chong Sam Lee got there first. There’s no way to get those names back unless the registrant does something wrong, like commit cybersquat-ting.
And the “sucks domains,” as they are called (no kidding), are just one example. What if someone had [your-brand].xxx and it went to a porn site, or what if a competitor had [yourbrand-Boise].com and caused potential customers to find their site instead of yours? Even if you perform aggressive search engine optimization, if someone owns a lot of domain names that include “[yourbrand], it can create problems.
“New generic Top Level Domains” (“new gTLDs”) add to the problem. In the old days, there were a manageable number of extensions such as .com, .net and .org. But the domain name sys-tem’s governing body, the Internet Corporation for Assigned Numbers and Names (“ICANN”), has created almost two thousand new extensions. And many of these new extensions are common words, so there can now be .tires, .bank and .insurance, for example. It seems that Geico would want to own geico.insurance instead of letting Dan Parisi get it.
Some suggestions for keeping control of your domain name portfolio:
1. Register domain names with a credible domain name registrar as soon as you come up with a new brand or trademark or business name.
2. Be aware of variants and misspellings, and register a reasonable number of domain names that incorporate those as well.
3. Be mindful of both the original generic Top Level Domains like .com, .net, .org and .xxx and the new generic Top Level Domains like .tires and .bank and .insurance when you are developing your domain name strategy.
4. Register your trademarks with the United States Patent and Trademark Office so you can have an official registration to point to if you need to invoke a formal process to try to get a domain name back. Remember, though, that not all domain names can be recovered if the registrant is not doing anything wrong.
5. Supplement your domain name registration strategy by employing search engine advertising programs like Google AdWords, which allow you to buy ads on Google that incorporate your trademarks so that when customers search for you, they find you instead of a competitor who bought the Google AdWords that incorporated your brands when you did not.
6. Try to recover domains that you failed to register (like [yourbrand]sucks.com by using any of the several techniques currently available under U.S. law, like a cybersquatting lawsuit or a complaint filed under the Uniform Dispute Resolution Policy promulgated by ICANN.
Brad Frazer is a partner at Hawley Troxell where he practices Internet law, publishing law and copyright law. He is a published novelist and a frequent author of Internet content. He may be reached at firstname.lastname@example.org.
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