Calvin Klein did it. Julia Roberts did it, too. And they did it online. These superstars wrested back control of registered domain names containing their well-recognized names using online dispute resolution. And you don't have to be rich or famous to do the same thing when you expand your successful start-up to the online global market. You've worked hard to turn your company or product name into a valuable business asset. If someone's beaten you to the registration punch, don't give up hope on nabbing your precious domain name just yet.
Check out the site and see who's using it. Has your main competitor registered it to block your entry into the online market? Or has the registrant tried to shake you down for big money before handing it over (known as cybersquatting)? Both Klein and Roberts favorably resolved their disputes online using e-mail arbitration. There's a good chance you can do the same. The Internet Corporation for Assigned Names and Numbers (ICANN), the administering body for the domain name system, established the Uniform Dispute Resolution Policy (UDRP).
The UDRP allows individuals and businesses to resolve domain name disputes online. In fact, when you register a domain name, you must agree to use ICANN's simplified online proceedings in any later disputes. Both parties can file complaints, offer responses, give defenses, and provide evidence by e-mail. Fax and mail can also be used, so face-to-face meetings are unnecessary. A review of the materials will determine if the domain name should be transferred or canceled. The decision is e-mailed to both parties. With the help of the Berkman Center for Internet & Society at Harvard University, you can access prior decisions online.
To win your domain name case, you'll need to show three main things. First, that the registered domain name is identical or confusingly similar to your service or trademark. This step should be simple. Just show that the registered domain name contains all or part of your registered mark. Be aware that another company may have legally used the same name before you did. You may also need to show that you used the mark successfully or registered it with the U.S. Patent Office before the registrant.
The second way to win your case is to show the registrant has no legal rights to the domain name. You might point to how the registering party is not using the site at all. Or perhaps they're trying to squeeze extra money from you beyond any normal registration fees. Your main competitor might be driven by mere spite. By holding onto the name, they eliminate you as online competition. You'll have to supply as much evidence as possible in the form of e-mails, letters, etc. to further your argument. However, there is a chance the registrant used the disputed name before you did. They may have lawfully registered the same mark or a similar one in another country or state. In that case, you'll be stuck looking for another domain name. How does adding .biz or .net to your existing company name grab you?
If possible, provide a certificate of registration from a valid service or trademark that grants authority to outline your legitimate rights to the disputed name. If you didn't register your mark, you'll have to provide lots of evidence to support your claim of prior use and ownership. That's why it's so critical to protect your business assets by registering services and trademarks early.
Third, you must prove the domain name was registered and used in bad faith. Bad faith is easier to prove if the registering party has a pattern of scooping up domain names associated with celebrity names or famous companies. If these domain names aren't associated with its own business interests, you'll be on your way to a strong case. The bad faith label may also apply if the registering party is doing nothing with the site yet demands excessive payment. In addition, if your direct competitor is the registrant, they may have a tough time claiming pure motives.
You want to satisfy the third-party decision-makers on all three points as much as possible. If so, you can expect a recommendation for ownership transfer or a registration cancellation of the disputed name. So, take it from the rich and famous—be sure to fully consider your options before throwing in the towel.
To recap, try to hang on to your dream domain name by making make sure you:
- Register valid services and trademarks early
- Try to resolve the domain name conflict outside of formal proceedings first
- Don't give in to unreasonable monetary demands
- Visit the ICANN web site for more information on resolving domain names disputes
- Gather sufficient evidence to show that
- the registered domain name is identical or confusingly similar to your service or trademark
- the registrant has no legitimate rights or interest to the domain name, and
- the domain name was registered and used in bad faith
