It Could Happen To You - Part 2

3. KNOW YOUR RIGHTSthe domainname to the mark owner or any third party
=> Domain Name Registrations Generallyfor financial gain withouthaving used, or having an intent
As a general rule, you can register any domain nameto use, the domain name in thebona fide offering of
that is notalready registered (subject to trademarkany goods or services, or the person's priorconduct
considerations discussedbelow). If your domain name isindicating a pattern of such conduct."
sufficiently distinctive, for example,jtdbizopps.com, theA common problem is identifying the culprit. In Jan
bit before the .com may also be a commonTallent-
lawtrademark (unless, of course, it's registered andDandridge's case, for example, the only information
then it's a registeredtrademark). If you DO have aabout theperpetrator Registrant:
distinctive domain name, then thediscussion in the nextDave Web (JTDBIZOPPS-COM-DOM)
section applies to you.Buy This Domain
If you don't have a distinctive domain name, however,5 Tpagrichnery St ., # 33
and by thisYerevan, Armenia 375010
I mean a name that is "descriptive" or in general usage,AM
for example,208.978.3555
"home-business.com", then this name will be neither aCall me skeptical, but somehow I doubt that's a real
common lawtrademark nor a registrable trademark.name andaddress. Fortunately, the Act has anticipated
In this case, once you've lost your domain namethis problem:
registration,you are, not to put too fine a point on it,"The owner of a mark may file an in rem civil action
screwed. You don't havemuch in the way of recourseagainsta domain name [an "in rem" proceeding is an
other than for the "generic" legalavenues which mayaction against thething rather than against a defendant
well be too expensive for you to pursue.- in this context, it meansthat the court can make an
These avenues are discussed below.order in relation to the domain nameitself rather than
=> Domain Names and Trademarksagainst Dave Web personally such as orderinghim to
On the other hand, if you have a distinctive domainsurrender the domain name] ... ".
name (i.e.,one that is not in common usage), then thatAnd as for remedies, assuming you are able to identify
name is alsolikely to be a common law trademarkyourparticular scumbag, these include injunctions and
(unless, as stated above,you've registered it, in whichdamages
case it's a registered trademark.(either actual or, in a case where your individual name
And, if you do have a common law trademark, I wouldis atissue, statutory damages of between $1,000 and
recommendthat you register it. Registration can only$100,000per domain name).
strengthen yourposition.)=> Generic Legal Avenues
The law generally sides with the pre-existingWhether or not you can pursue an action under the
trademark ownerover the domain name holder. InAct, thereare a number of legal avenues open to
addition, the U.S. hasenacted the federalanyone in Jan'ssituation (and by that, I mean, someone
Anti-Cybersquatting Consumer Protectionwho is using thedomain name to point to a site that
Act (the "Act"). Under the Act, you can sue adamages your reputation).
cybersquatter toget back your domain name andFirst off, let's recognize this practice for what it is.
sometimes damages to boot.Extortion.
So, what's actionable under the Act? Here's an extractPure and simple. It's a crime. So is criminal defamation.
fromthe Act itself:Write a strongly worded cease and desist letter to the
"A person shall be liable in a civil action by the owneroffender,threatening to report them to the District
of a mark,including a personal name which is protectedAttorney and/or thepolice and the Federal Trade
as a mark ... if,without regard to the goods or servicesCommission as well as institutinga civil suit. You are
of the parties, that person ­more likely to get a result if the letter comesfrom your
(i) has a bad faith intent to profit from that mark ...; andattorney.
(ii) registers, traffics in, or uses a domain name thatIf the offender doesn't comply, report them. As for
­what actionwill be taken, your guess is as good as
(I) in the case of a mark that is distinctive at the timemine but at least you'vedone what you can.
of registrationof the domain name, is identical orIf you have the resources to do so, you can also bring
confusingly similar to that mark;civilproceedings against the offender on the same
(II) in the case of a famous mark that is famous at thegrounds. Theconduct in question is egregious enough
time ofregistration of the domain name, is identical orthat you may well getpunitive damages awarded in
confusingly similarto or dilutive of that mark; oryour favor.
(III) is a [registered] trademark ..."Finally, and I HATE to even suggest this, the most
In terms of what constitutes "bad faith", the Actcost-effectiveoption of all may be to pay what is
provides that thecourt may consider factors (amongdemanded. That at least getsthe domain name back
others) such as:under YOUR control where it belongs.
"The person's [i.e., the alleged cybersquatter's] intent toAnd there's nothing to stop you turning around and
divertcustomers from the mark owner's online locationreporting theindividual in question to the DA, police, FTC
to a siteaccessible under the domain name that couldetc.. In fact, payingover the money may be your best
harm the goodwillrepresented by the mark, either forchance of identifying theperpetrator so you can initiate
commercial gain or with theintent to disparage thea criminal prosecution.
mark, by creating a likelihood of confusionas to theOf course, all of this is damage control which is a
source, sponsorship, affiliation, or endorsement ofVERY poorsubstitute for prevention. So go back to
thesite; andItem 1. and calendaryour domain name due dates to
"the person's offer to transfer, sell, or otherwise assignavoid getting into this messin the first place.