Domain Name Disputes

You've decided that it's time for your business to join the party and get on the Web. Knowing nothing about how you do that, you contact an Internet service provider (ISP). They suggest that you register your own domain. So, you pick "yourfavoritename.com" and they handle the registration process for you. Next, you have somebody create a Web site for you. Business starts flowing from the Web. You feel like a genius until you get a "cease and desist letter" from somebody demanding that you relinquish your domain name to them. What do you do?

You have a few basic choices. One is to give them the domain name. Of course, if you have a profitable Web site at that address, this wouldn't be your first choice. It's a bit like changing your telephone number and not being able to give the new number to callers. If you choose to fight or ignore the demand, what are your rights?

Most often, you're going to find that the basis of their demand is that they claim trademark rights in the domain name you registered. When you consult your lawyer at this point, you're going to learn more than you ever wanted to know about Network Solution, Inc.'s (NSI) Domain Name Dispute Policy (the "Policy).

Domain Name Registration Process

For you to comprehend the Policy, you're going to need some background. NSI is the company responsible for the registration of domain names that end in COM, ORG, NET and EDU. NSI's policy is and has always been to register them on a "first come, first served" basis. As stated by NSI in the Policy, when NSI registers a domain name, it doesn't determine the legality of the registration, nor in any way evaluate the propriety of the registration. It only accepts the role of mindless registrar. It's neither a court nor an administrative decision-maker.

NSI's position is that you, as the applicant for a domain name, are solely responsible for your selection. As stated in the Policy, "The registrant, by completing and submitting the Domain Name Registration Agreement . . . represents that . . . the registration of the selected domain name, to the best of the registrant's knowledge, does not interfere with or infringe upon the rights of any third party. The registrant also represents that the domain name is not registered for any unlawful purpose."

Preventing the Problem

The interesting part of the Policy is that you're representing that your selection doesn't infringe of any other party's rights. How would you know?

While there's no perfect solution to this question, your starting point should have been a trademark search BEFORE you registered your domain. It might have revealed a registered trademark identical to your proposed domain name. If you used an ISP to handle your registration, then your ISP should have recommended this to you before you registered your domain name. It would be "professional" if the ISP trade associations that exist suggested this procedure to its members.

Domain Name Dispute Policy

While NSI disclaims responsibility for resolving disputes, the Policy does have a procedure that could lead to a domain name being put "on hold" pending resolution of the dispute by a court.

If you own a registered trademark and discover that somebody else has registered it as a domain name, your first step would be to send a written notice to the domain name registrant. The Policy says that the notice must state that you believe "the registration and use of the disputed domain name violates [your] trademark rights . . . . [T]he notice must also clearly allege the factual and legal basis for the belief."

Next, you would send NSI an original, certified copy, of a trademark registration, which is in full force and effect and is identical to the domain in dispute. The trademark registration can be from any country. If your trademark incorporates a design, NSI will not accept it under the Policy.

If the domain name creation date PRECEDES the effective date of the trademark registration, NSI won't do anything. Now, that doesn't mean the domain name registrant "wins." Remember, NSI isn't a court. The trademark owner can still sue the registrant and get injunctive relief and damages.

If the domain name creation date is AFTER the effective date of the trademark registration, NSI will request that the registrant supply proof of its own trademark. If the registrant can supply proof of a trademark dated before the date of the notice of dispute, NSI won't act. Again, possible litigation looms.

Now, in the two scenarios above, the resolution with NSI favored the registrant. If it goes the other way, for example, if the domain name creation date is AFTER the effective date of the trademark registration, NSI will put the domain name "on hold" until a court decides who gets the domain. If the registrant cooperates with this process, NSI will assist with the registration of a new domain name and allow the registrant to hold both domains for up to 90 days. This 90-day use of the old and new domain names is designed to allow for an orderly switchover to the new domain.

Once a domain name is "on hold," NSI keeps it there until a court orders otherwise or the parties resolve the matter between themselves. In the right situation, a pre-emptive strike might help one side tilt things their way. The key is to act before NSI.

The Policy states that if either side in a domain name dispute files a lawsuit, NSI will maintain the status quo pending resolution of the matter by a court. So, if the domain name is not "on hold" yet, it won't be put there once a suit is filed.

In some cases, such as when a registrant has an arguably legitimate claim to a domain, I recommend a pre-emptive strike. The idea is to file the lawsuit before the domain goes "on-hold." In this way, the registrant gets to use the domain name while the suit is pending unless the other side can get a temporary injunction from the court and that's not so easy to do. Remember that my starting point was a registrant with an arguably legitimate claim -- not a cybersquatter. ("Cybersquatter" is a pejorative term used to describe those who register a domain name for the purpose of extorting a payment from its rightful owner.)

You may wonder, how can somebody have an arguably good claim against the trademark owner. The short answer is that trademark law is much older than domain name law and the interaction between the two remains unsettled.

For example, a company can have a valid, but unregistered common law trademark. It could exist in the face of somebody else's valid "registered" trademark. The Policy is silent on common law trademarks. Yet, they're real and confer substantial rights on their owner. Only a court could even begin to sort out the competing rights between those who claim different types of trademarks. It's in this type of situation where a pre-emptive strike could make quite a difference.

While the law settles out, you're forced to make domain name choices in an uncertain universe fraught with ambiguity. With that as a given, be sure to get some expert advice before jumping in. The starting point is almost always that trademark search.