INTERNET DOMAIN
NAME DISPUTES AND HOW TO HANDLE THEM
There
are thousands of Internet domain names that are being registered each and every
day, and many of such registrations result in internet domain name disputes,
such as Cybersquatting[1], Typo
Squatting[2], and
Domain Name Hijacking[3]. As a result, the
greatest concentration of Internet-related litigation to date has involved
domain name disputes. Depending
on what particular domain name dispute that you are experiencing, there will be
different options in how you may elect to attempt to resolve the dispute.
In order to have
a website, you must register the domain or URL of your website with an
accredited domain name registrar such as Network
Solutions® or GoDaddy®. Anyone who
registers an Internet domain name must represent that: (i) the statements in its application are
true; (ii) to the best of its knowledge, it’s selected domain name does not
interfere with or infringe upon the rights of any third party such as trademark
rights; and (iii) its selected domain name is not being registered for any
unlawful purpose such as unfair and deceptive business practices. Defendants who are guilty of Cybersquatting,
Typo Squatting and Domain Name Hijacking breach these representations. If you are able to collect clear and
convincing evidence of such unlawful activity, then it is very possible that
you will be able to acquire and control domain names harming your business
through a domain name dispute procedure administered by WIPO[4]. This WIPO procedure is an arbitration process
that provides for a speedy and cost effective means of resolving domain name
disputes. Over Ninety percent (90%) of
WIPO filed complaints have been won by plaintiffs. If you are a victim of a domain name dispute,
this may be a very attractive means to obtain control of the disputed domain
name and resolve the dispute.
However, there are other times where WIPO arbitration may not be
attractive procedure to address your domain name dispute and you may need to
consider filing a lawsuit in court.
Domain name disputes involving competing name rights, such as situations
where two companies are using the same or similar business name and each
company wants to register the name as a domain name. For example, Nissan Motors, Inc. and Nissan
Computers, Inc. litigated against each other to see who had the right to
register and own the domain name www.nissan.com.
Since these similar business name
cases often involve relatively meritorious claims on both sides, and are highly
fact specific, litigation is an attractive forum to resolve such domain name
disputes.
Additionally, we are now seeing a larger number of domain name
disputes where former employees or website developers, and even competitors, are
implementing information warfare tactics in order to acquire personal
information about the actual domain name owner to impersonate them and persuade
the domain name registrar to modify the registration information and/or
transfer the domain to another registrar.
Once this has been accomplished, the domain name hijacker has full
control of the domain and can use it or sell it to a third party. This can be
financially devastating to the original domain name holder, who may have
derived commercial income from a website hosted at the domain or conducted
business through that domain's e-mail accounts. Addressing these types of
domain name hijacking situations is often very time intensive that interrupts
or temporarily halts your daily business operations and is very expensive in
resolving the dispute because it will often require the implementation of
covert tactics as well as both mediation and litigation.
No
matter what domain name dispute that you are forced to address, your least
expensive means in addressing any domain name dispute is to be proactive in
protecting your domain names. This
involves targeting and registering domain names related to your business,
requiring all employees and vendors who have access to your domain name
registration data to enter into non-disclosure agreements with significant
penalties for any breach thereof, and actively monitoring your competition’s
domain name activity.
Mark Ishman is the founding
attorney of the Ishman Law Firm, PC. You can reach Mark at: (919) 468-3266 or mishman@ishmanlaw.com.
[1] “Cybersquatting” is where a defendant registers or uses a domain
name with bad faith intent to profit from the goodwill of a trademark belonging
to someone else. In such situations, the defendant will attempt to sell the
domain to the owner of the trademark contained within the domain name at an
inflated price, or use the domain name to unlawfully compete against the
trademark owner.
[2] “Typo Squatting” is where a defendant
seeks to take advantage of consumers' likely typographical errors that involve
the use of trademarks such as www.toyata.com for Toyota®.
[3] “Domain Name Hijacking” is where a defendant transfers the
registration of a currently registered domain name without the permission of
its original registrant, generally by exploiting vulnerability in the domain
name registration system. This is
typically attempted by your disgruntled employees or vendors, or your
competitors. This is a form of identity
theft.
[4] “WIPO” is the abbreviation for the World Intellectual Property Organization that is a specialized international agency of the United Nations that is dedicated to safeguarding the rights of intellectual property owners.