Practical Tips in Fighting and Winning a Domain Name Dispute

Hello!

Thank you for coming back! In my previous post I gave an example of a common problem many companys and bloggers deal with on a daily basis. Here is the example:

Example: You go ahead and register your domain name, Wethepeople.com. Hey you own it! But then some company comes along and registers Wearethepeople.com. You both are in same business and when you do a google search, their name comes up first. You have built a brand name, reputation, and following with Wethepeople.com. They are diverting traffic from your blog and causing confusion. What can you do?

So what can you do? Below are several cost effective and practical tips in fighting and winning a domain name dispute:

1. Hire an attorney to write a simple letter conveying your right in the domain name and demanding that the offender transer the domain name to you, the rightful owner. You or an attorney can use the service, Whois.net to find out the name of the individual or company that registered the domain name; address and or phone number of the registrant; and the name and address of the hosting company.

From my experience, a letter from an attorney stating your lawful right to the domain name, i.e., you own a valid trademark in the domain name; and evidence that their registration of a similar domain name is diverting traffic from your site, is usually enough to scare the offender into doing what you want.

Hiring an attorney to write a 1-2 page letter will usually take about 1-2 hours.  2 hours of legal fees is peanuts to what you could be losing in lost traffic and sales.

2. If the cease and desist letter from an attorney does not work, you can file a domain name dispute with ICANN.  ICANN, the Internet Corporation for Assigned Names and Numbers, is the governing body for internet (domain) names.  ICANN has a dispute resolution procedure to resolve domain name disputes.  In order to file and be successful at a domain name dispute, you must show the following:

a. The domain name is identical or confusing similar to the trademark the domain name owner has in the domain name;

b. Demonstrate that the offender registered the domain name in bad faith, i.e., they registered the domain name to divert traffic from your site; to cybersquat (sit on the name in order to strong arm you into purchasing it); or the offender registered it to prevent you the rightful owner from doing so.

c.  Show that the offender does not have any valid rights or use for the registered domain name. For example, they do not own a business that includes the domain name or they or their company is not generally known by the domain name.

The cost to file a domain name dispute with ICANN is $2600 for a 3 member arbitration panel and $1300 for a single member arbitration panel.  

Also, remember to register your trademark which contains your domain name before filing a dispute with ICANN.  Registering a trademark with the USPTO can be costly but is so worth the cost and effort.  However, registering your trademark with your state is relatively inexpensive.  Trademark registration is good evidence that you legitimately own the trademark in question.  It definitely helps when presenting a case before ICANN.

I hope this article answered any questions you may have had about domain name disputes.  If you have any further questions, please contact me at lgivens@phillipsgivenslaw.com.

Our next topic will discuss how to properly copyright written material.  This article is especially for you bloggers!