So, now that you understand why it’s worth your (company’s) time think about domains, it’s time to work through the best practices for picking, registering, and recovering domains. If you haven’t read the first blog in this series, you can find it here.
This blog will not address domain issues related to search as there are already several other blogs that have done a great job covering domains from that angle. Moz goes into detail about how choosing a domain can impact search and Search Engine Land provides a great list of best practices for domains.
It should be clear that the process of registering domain names is far simpler and more cost effective than domain recovery. That said, there is a limit to the profitability and usefulness of registering every possible combination of hostnames and TLDs. When choosing names one should remember three simple rules: register early, register smart, and register right.
- Buy the name first, publicize the product or service later. This simple rule is often ignored, but should be built into the domain request process.
- Choose the right circumstances in which to purchase a new domain name:
- Launch of new brands and products
- Mergers and acquisitions
- Expansion into international markets
Tip: if you have a company policy regarding domain acquisition, or if there is an official domain request procedure in place, make sure that it has teeth. In other words, if it can’t be enforced it shouldn’t even be a policy / procedure.
- Register the necessary domains “where” they are needed. Determining which variations of domains should be registered, and in which regions (ccTLDs) is a decision making process that should involve those individuals who understand the technical factors involved, the local business strategies, as well as international trademark law.
- Not all domains are created equal. Some domains are essential to online operations, others are tertiary. Spend company resources accordingly.
- There are more than 250 ccTLDs which have varying levels of regulation. Registering a single domain name in each combination quickly becomes a logistical nightmare. Factoring in the cost of registering variations of the name, including misspellings, and abbreviations, makes mass-registry a near impossible enterprise. Make every effort to prioritize the registration of important domains in countries where your company has a strong presence, or anticipates significant growth.
- Purchase from a central domain department (or third-party vendor) with company approval and accurate information.
- For the most important domains make sure to register the likely variations. Consider the following:
- Various TLDs (.com, .net, .org)
- Misspellings (example and xample)
- Variations of word order
Recovering a domain is not always possible, but recent revisions to trademark law have made it easier for corporations to prevail should a domain dispute be taken to federal court. This is good news for corporations; however, court cases often come with the commitment of additional company resources and timelines that are not always expedient.
This is why it is necessary to consider all the avenues of domain recovery, especially those which do not involve the costs and PR challenges associated with a high profile court case. Regardless of the process chosen, every avenue of domain recovery begins with research.
In depth research is the first step in domain recovery. Research should be driven by a handful of core questions
- Who registered the domain name?
- Is their registry information fraudulent? Incomplete? Inaccurate? (see Technicalities)
- When did they register it? In the case that they registered the domain prior to your company’s trademark, no infringement has taken place.
- Does the domain appear to serve a legitimate purpose? Are they simply cyber-squatting, and hoping for a payoff? Are they trying to defraud your customers?
- Could they have a legitimate claim to the domain (similar company name, location, product, service etc.)?
Having determined the answers to these questions, it is time to perform a cost/benefit analysis which takes into account the value (to your company) of the domain in question, and the projected cost of domain recovery. After all, not all domains are created equal, and should not be pursued with the same vigor.
If a domain that has been flagged for recovery through the monitoring process comes up for sale, the most expedient path to domain recovery can be an outright purchase. This option should be reserved for situations where time or money are limiting factors. For example, if it would take months to resolve a formal dispute, but a site needs to be launched in weeks, or if purchasing the domain would cost significantly less than the costs associated with a court case.
In some instances, a third party can be called upon to purchase the domain anonymously at a lower cost.
During the research process it may become apparent that the domain in question was registered with fraudulent, misleading, or inaccurate information. If this is the case, the registrant may be made to forfeit the domain name. Report suspected fraudulent information to ICANN.
Situations may arise where time is not a concern in the domain recovery process. Check to see when the domain is set to expire. Be ready to purchase it when it comes available. This can be a painless form of recovery if waiting is not an issue.
Uniform Domain-Name Dispute-Resolution is a service provided by ICANN. Through this process a company can recover a domain name, but cannot pursue additional damages. It is inexpensive, and disputes are often settled far faster than court cases. According to Mark Monitor “eighty-five percent of all UDRP cases are held in favor of the trademark holder and the fees and costs are typically less than $10,000.”
The following is quoted from the ICANN website
“Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name. Disputes alleged to arise from abusive registrations of domain names (for example, cybersquatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.
To invoke the policy, a trademark owner should either (a) file a complaint in a court of proper jurisdiction against the domain-name holder (or where appropriate an in-rem action concerning the domain name) or (b) in cases of abusive registration submit a complaint to an approved dispute-resolution service provider.”
–Additional information and dispute results are available on ICANN
When other avenues of domain recovery have proved unsuccessful, or if the domain in question is too important to rely on faster or less expensive methods, you may file a case under the ACPA (Anti-cybersquatting Consumer Protection Act). This has the benefit of pursuing statutory damages in addition to the recovery of the domain name (from 1K-100K per domain). Also, in egregious cases, you can request an injunction, which, if granted, would take effect before the final ruling in the case.
Before engaging in the process of domain recovery in federal court, it is worth taking note of exemptions from trademark infringement, and historical precedence for similar cases (see appendix). Notable exemptions include
- “fair use” of a mark in the context of comparative commercial advertising or promotion
- non-commercial uses, such as parody, satire and editorial commentary (this includes so-called “gripe sites”)
- all forms of news reporting and news commentary
Precedent from Federal Cases
Below are a collection of summaries of a variety of cases that have shaped domain precedent in federal courts.
Gateway 2000, Inc. v. Gateway.com, Inc., 1997 U.S. Dist. Lexis 2144 (W.D.NC 2/6/97)
Gateway 2000 sued for the right to gateway.com, but lost because Gateway.com had registered the name for legitimate purposes before Gateway 2000 had become a famous trademark.
Shade’s Landing v. Williams, 1999 U.S. Dist. LEXIS 19782 (D. Mn. 12/22/99)
Shade’s Landing held the domain Home-Market.com which it used as part of a referral network for businesses in the real estate industry. Williams, a company also in the real estate business, registered the domain Home-Market.net. Consequently, Shade’s Landing sued, and asked for a preliminary injunction. There are two interesting outcomes from this case. First, the court ruled that despite the difference in gTLDs, the domains were essentially identical. Second, the injunction was denied, partly because Williams did not use its website to perform the same networking function.
Panavision v. Toeppen, 141 F.3d 1316 (9th Cir. 4/17/98)
Dennis Toeppen held a multitude of domain names containing elements of various companies’ trademarks. When contacted by Panavision concerning panavision.com, which he had registered, Toeppen offered to sell the domain. Panavision sued claiming trademark dilution. Toeppen argued that because the site showed pictures of Pana IL, a non-commercial use according to him, stipulations for trademark dilution did not apply. The court disagreed with Toeppen, awarding the domain name to Panavision.
Following the precedent set in this case, companies should take note that it is not enough for the plaintiff to show unlawful commercial use, they must prove trademark dilution as well.