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Insight Protecting Your Domain Name

By Bradlee R. Frazer,

Guess who owns the Internet do­main name microsoftsucks.com? Not Mi­crosoft. Guess who owns applesucks.com? Not Apple.

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 bfrazer@hawleytroxell.com.

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