Domain Names Are Trademarks Too

Hello Friends:

I know I have neglected this blog, but I have been so busy working. In addition, I have experienced major life changes in the past six months.

But it is good to be back.  I am really excited about the new social media platforms and changes in the social media space in the past year.  Pinterest and Instagram are blowing up and with their popularity comes a host of issues and questions regarding copyright law.  Apple is still tangled in a battle for use of the iPAD name.  And, with the emergence of mobile apps and computing, privacy concerns are very real and immediate for consumers.

In the next few weeks, I will give insight on these legal issues and hopefully provide an understanding on how to protect your valuable intellectual property, your privacy, and tips on how to not infringe on other's IP.  So tune in and if you have any questions, please do email me at lgivens@phillipsgivenslaw.com.

Today, I want to talk about domain names.  As a branding strategy, always think of domain names as trademarks.  So choose a domain name carefully.  Domain names can be business names, product names, blog names, or tag lines.  All of these can be trademarks if they are unique to a product or service.  For example, my blog name is IPLAW101, which is also the domain name for the blog and is a trademark.  It is a trademark because it is unique in describing my blog's original content.  


Sometimes cybersquatters or trademark infringers may use a variation of an owner's domain name or an owner's actual trademark name in order to divert traffic from the owner's site or to benefit from the goodwill one has built from a good trademark.  If your domain name is also your trademark, you can pursue these infringers through cease and desist orders.  From my experience, cybersquatters and trademark infringers usually cease infringement or give up the rightful owner's domain name if they know further legal action is pending.


If you have any comments, please leave one.  


Until next time, 


Latoicha Givens

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!

 

What every blogger should know about trademark law before and while blogging

Hello Friends!

I felt the need to write this article because one, I am a blogger.  Also check me out at www.luxetips.com.  And two, I have had discussions with so many bloggers about whether they owned a trademark and how to protect the good name and reputation they have built through blogging.  I will give you an example of some of the pitfalls bloggers have encountered.  

Example 1:  You register a blog with blogger and your blog name is Widgets.blogspot.com.  You build up a reputation and readership and you decide you want to own your own domain name. You contact a hosting company and try to register Widgets.com, but low and behold, someone else already owns the domain name.  You contact the owner of the domain name and they will gladly let you have it.....for the low low price of $10,000.00! Yikes.

Example 2: 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 fellow blogger and potential bloggers follow these simple rules to ensure your blog, your brand and trademark, is protected and avoid becoming prey to infringers and cybersquatters.

1.  A blog name is a trademark.  One misconception many bloggers have is that they do not think they own a trademark because they are not organized as a company.  If you a blogger and publish daily, weekly, or monthly articles on your blog, you are in the business of publishing. Also if you receive advertising revenue, or in-kind gifts, products, etc to review on your blog, you are actively engage in commerce - the ability to conduct business transactions.  A trademark is defined as words, symbols, phrases or designs which the public associates with a single source of goods or services. By law you establish trademark rights by actual use of the mark in commerce or filing an intent to use the mark with the United States Patent and Trademark Office, USPTO.

2. Do a preliminary search for your blog name. Make sure the blog name you choose is not identical or too similar to a brand name, company, or other blog.  You can accomplish this by doing a Google Search.  Now Google may not capture every identicial or similar name, (only a comprehensive trademark search will do this) but those that are registered with government agencies and are on the web will be found.  The last thing you want to receive is a cease and desist letter from me,  a trademark lawyer, stating shut down your blog or else!  

3. Register your domain name.  A MUST MUST MUST! You must own your blog's name. Before starting a blog, you have to own your name.  I can't repeat it enough.  Now there are tons of services like blogger, typepad, and wordpress that will let you create a blog name through their service but this DOES NOT mean you own the domain name. You can choose a domain registrar like VL Hosting to register your name for a nominal fee. Sometimes fees are as low as $10.00 per year.  Why do this? Because there are mean lean sharks out in the blogosphere called cybersquatters.  They literally surf the net for brand names and company names that do not have registered domain names and register them so they can hold them (cybersquat them) until you come crying and begging for them to release it.  They will but for an astronomical fee.  

4. Register your blog's name, phrases, and design as a trademark.  It is just good practice and planning to register your blog as a trademark.  You never know how successful you and your blog may be.  Without registering your trademark, you do own a lawful common law trademark right (a trademark right without federal or state trademark registration). However to bring a trademark infringement action against an infringer you must register the trademark with the state where you are located or the USPTO.  Also registering your blog as a trademark is good evidence that you have a legitimate interest in your blog's domain name, if you have to file a domain name dispute against someone who purposely registers a domain name similar to yours in order to steal your traffic.  I do understand that obtaining federal trademark registration can be expensive, but it is relatively inexpensive to register with your state. Depending on the state where you are located, fees can be as low as $15.00.  But it is smart to get some legal advice.  A poorly drafted trademark application will be rejected.

If you are a blogger already engaged in publishing your blog and have not completed any of these steps, I would recommend that you complete these steps as soon as possible! Believe me accomplishing these simple tasks will save you headaches and potentially money.  

I hope this article was helpful.  If you would like further information, please contact me at lgivens@phillipsgivenslaw.com.  Please stay tuned for my next topic:  How to file and win a domain name dispute.