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Rule
No. 1: Register
dictionary words and fanciful terms that you make up.
Registering the coined trademarks of third parties as domain
names is a risky business and may expose you to substantial
liability in court. Dictionary
words are usually fair game, but even these are often subject to the
claims of a trademark holder. Make
sure not to make any use of a trademarked dictionary term that
targets or competes with the trademark holder or its business in any
way. Also, it is a good
idea to perform a trademark search at < www.uspto.gov
> to be on the safe side. It
costs nothing and there are panel decisions that impute this duty to
domain name registrants.
Rule
No. 2: Use
accurate contact information. Domain name disputes are highly fact-sensitive.
In a close case, a fact in either direction can be the
difference between a finding of good or bad faith.
For example, there is no bad faith in simply registering the
domain name <acme.com>, which is a dictionary word.
If, however, you list phony contact information for your
domain name, it will look like you have something to hide, even if
you do not. That can be
enough for some panelists to rule against you.
Rule
No. 3: Do
not register domain names with the intent to sell them to a
trademark holder. This
is a basic rule of thumb for legitimate domainers to follow.
In addition, if you are approached by a trademark holder
about buying a descriptive word domain name from you, be very
careful in how you approach the sale. Your emails may end up as
exhibits in a UDRP filed against you.
If you had no intention of ever selling your domain name to a
given trademark holder, but offer to do so following receipt of a
cease and desist letter, some UDRP panelists will view that as
evidence of bad faith.
Rule
No. 4: Do
not forward Web traffic to a competing Web site. If you register a generic word domain name that also serves
as a trademark, resist the temptation to forward it to the Web site
of a competitor of the trademark owner (a “Competitor”).
Posting paid advertisements for a Competitor, forwarding Web
traffic to a Competitor’s Web site for money, or enrolling in a
Competitor’s affiliate program are all factors that a UDRP panel
will hold against you.
Rule
No. 5: Be
honest! Nothing is
worse than misrepresenting facts about your registration or use of a
domain name. If you
lie, chances are, your lies will be discovered and used against you.
Avoid making up phony business plans or claims of intended
use that you cannot support. Passive
holding of a descriptive domain name, alone, does not constitute bad
faith.
Rule
No. 6: Don’t
make up crazy stories. This
overlaps a bit with the last point, but a few examples deserve
special mention. When
responding to a cease and desist letter, avoid blurting out,
“Leave me alone. I have brain cancer, and you are making it worse!”
Although this type of approach might scare off some
attorneys, it can also be evidence of bad faith when it can be
proved that the registrant does not, in fact, have brain cancer. Another technique to avoid is claiming that you are a
dog, cat, talking horse, or other domesticated or wild animal. There is an actual case where the Respondent claimed to be a
cat. It is an amusing
decision, but he lost.
Rule
No. 7: Avoid
unnecessarily antagonizing the other side.
My sense is that many proceedings have been brought as a
result of antagonistic or abrasive comments made by a domain holder.
You may be justified in your registration, but angry or
insulting comments may raise the odds that you get sued, and make
you look bad when you are.
Rule
No. 8: No
forwarding Web traffic for trademarks – even descriptive ones –
to porn sites, ever. This
one speaks for itself.
Rule
No. 9: Resist the
temptation to cyberflee. Changing
your contact information following receipt of a cease and desist
letter or the filing of a UDRP just looks bad.
Don’t do it.
Rule
No. 10: Do
not ignore cease and desist letters.
Before filing a UDRP or commencing legal action in court,
most trademark owners will send a cease and desist letter.
These letters typically set forth the trademark owner’s
claimed rights and assert that the registration and use of the
domain name at issue constitute trademark infringement and
cybersquatting, among other claims. Such letters are appropriate where actual bad faith
registration and use are concerned.
In many cases, however, the domain name at issue is a common,
dictionary word and the party who registered it does not intend to
use the domain name in competition with the trademark holder or
otherwise offer it to such a holder for sale.
In such cases, the cease and desist letter is often the first
step in a bad faith attempt to wrest control of a domain name away
from a legitimate holder.
If you are contemplating buying
a domain name and/or starting a company, you should consult with a
competent attorney who specializes in Internet law.
Many costly problems can be avoided from the beginning, and
the cost will be far less than the cost of fighting a domain name
dispute. If you are already a domain name holder and find yourself on
the receiving end of a cease and desist letter, the best thing that
you can do is to contact a domain name attorney to assess your
situation. A response
letter should not cost much and will show the trademark holder that
you are prepared to defend yourself.
It could also save you the cost of fighting a UDRP claim.
An attorney will also help you to evaluate your options and
to make sure that you do not take any actions that could be taken as
evidence of bad faith.
*****
Brett
Lewis Bio
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