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April 03, 2015

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Brett E. Lewis, Esq.
Lewis & Lin LLC

Practical Tips For Protecting Your Domain Names

After experiencing a letdown following the bursting of the Internet bubble in 2000, the sheer number of domain name registrations, their value and use have eclipsed their former peaks, by a number of different measures.  Yet, there is a finite supply of the best top level domains.  As a result, there is more pressure to own the existing good domain name registrations than at probably any time in the past, and fewer available options.

In this regard, legitimate domain name holders must be especially careful to make sure to use their domain names in a manner that is consistent with third party rights.  The simple truth is that the UDRP process can be, and has been, used wrongly to wrest valuable domain names from legitimate holders. As a domain name holder, you should make sure not to create a record that could be used against you in a UDRP proceeding.  The following tips can help you to avoid trouble

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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