The right domain name can be very important to the branding and ease of use of a website. That often means that a simpler and more memorable domain name is preferable to something long and complicated.
A domain name performs two important functions. One, it provides an internet address at which a party can make content accessible online. Two, it acts as one of the more valuable trade-marks of the business.
The value and function of a domain name often act as incentives to register domain names early in the branding process. Indeed the ease at which anyone may register a domain name is both advantageous to those with legitimate designs on the domain name and disadvantageous where squatters may claim domain names that contain or play on valuable brands developed by others.
Below I address some of the practical issues involved in obtaining and managing domain names from a legal perspective.
Who Registers the Domain Name
The actual owners of a domain name often leave the registration of the domain name to their employees or contractors. What often happens is that the person who obtains the domain name registration makes himself the owner and administrative contact for the domain name, whether intentionally or by mistake. The administrative contact will also create a password that will enable them to exercise control over the domain name. Letting a contractor or employee have sole access to the domain name registration by way of a secret password can become very problematic in certain circumstances, for example, a contract dispute with the contractor or in the case the employee is terminated. It is recommended that the domain name registration be made in the name of the actual owner and that an executive of the owner be given the password associated with the domain name.
Although domain names are accessible worldwide, several countries have domestic organizations that maintain the registration systems for the so-called country code top level domains such as .CA for Canada and .JP for Japan. If a certain country is or may become an important market for your client, then it would be worthwhile to secure the country-specific registrations in addition to the often sought after .COM registrations. Even if the country specific registrations are only used to redirect to the .COM address, having the country-specific registration keeps them out of the hands of cybersquatters who may maintain or use a registration to the detriment of the legitimate owner.
It is impossible to imagine all the variations of the actual domain name your client wants. That said some time should be devoted to thinking about the most likely variations of your desired domain name. Domain names that are close variations or common typos of or phonetically similar to the main domain name should also be registered. The more domain name registrations you have that are similar to the main domain name, the less likely someone else can register a variation and either try and frustrate your client with it or make a profit by selling it to your client.
Attacking a Cybersquatter
If you discover that a domain name has been registered by a person you do not believe is entitled to it, there are methods you can use to get the domain name back. In respect of a .COM domain name, you would need to file a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). If you bring a dispute against a cyber squatter concerning a domain name, in general, you would need to prove three things in order to succeed in the dispute, namely: (1) the domain name is identical or confusingly similar to a trade-mark in which you have rights (NOTE: it does not say that the trade-mark has to be registered); (2) the domain name registrant has no rights or legitimate interests in the domain name; and (3) the domain has been registered in bad faith.
The UDRP contains more information on how you may establish or contest the three prongs of a dispute, for example, a party may prove that the registration has been obtained in bad faith if it can establish that the domain name was registered primarily to disrupt the business of a competitor or if it can be established that the registrant has registered the domain name for the purpose of selling it back to the complainant.
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Ryan K. Smith is a Lawyer and Trademark Agent at Nakano Smith Law Group. He is a corporate and commercial lawyer and also has expertise in all manner of intellectual property matters including trademarks, copyrights, domain names, and confidential information. Ryan is the author of Intellectual Property in Commercial Transactions (Thomson Reuters). You can reach Mr. Smith at (647) 806-6133 and [email protected]. This article is provided for information purposes only and is not legal advice and may not be relied upon.