5 Tips: Getting Your Domain Name

You’ve poured your resources into developing a brand and now want to build a website.  When you go to register your brand name as a domain name you find that it’s already taken.  Before you invest in rebranding, here are five tips for getting the domain name you want.

1.  Buy It!

You could always buy the domain name you want if the registrant is willing to sell it to you.  There are ways to get a domain name back from someone that has in bad faith registered it.  But, the reality is that sometimes just paying for it is the best option.  There are companies that buy domain names that include familiar names or phrases hoping one day that the domain name's value increases netting the registrant a profit.  Other times, the domain name was registered with good intentions.  In those cases, maybe the owner isn't using it and has no plans to use it.  There are tons of websites out there that have been abandoned but remain visible for months.  The domain dispute resolution procedures are focused on bad faith registrants.  They are timely and costly.  Before any of the methods discussed below are implemented, it's vital to contact the registrant to see if they are willing to sell it.  Domain names are bought, sold, and auctioned on sites like eBay and GreatDomains.com.  If the registrant is willing to sell the domain to you at a reasonable rate, you could avoid filing and legal fees, which may, in the end, be greater that the registrant's selling price.  If you aren't getting a callback, employ an attorney to help out.  The cost to negotiate the sale of a domain will be less than the cost to go after the registrant.  If negotiations fail, you still have options.

2.  File a Federal Trademark Infringement Lawsuit

Trademark rights are determined based on first-use.  If you are the first user of the words or phrases making up the domain name, you have trademark rights to them, which the Lanham Act protects.  If you take the registrant to court and win, the domain name is transferred, and you'll be awarded money damages for lost profit.  Lawsuits could cost anywhere from nothing in the case of a contingency fee agreement to several thousand dollars, and take 2-3 years to reach a resolution.

3.  File a Cybersquatting Lawsuit

If the registrant has acted in bath faith, it is also possible to file a lawsuit under the Anticybersquatting Consumer Protection Act ("ACPA").  Under the ACPA, a trademark owner may bring a cause of action against a domain name registrant who has a bad faith intent to profit from the mark, registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark, identical or confusingly similar to or dilutive of a famous mark, or is

 a trademark related to the Red Cross or the Olympics.  The ACPA is broader in scope than what is available in trademark infringement cases because it does not include an exemption for fair use or any other speech protected under the First Amendment, which is an exception to trademark infringement.  Cases filed under the ACPA take 2-3 years on average to come to a resolution and have costs similar to trademark infringement cases.  Cybersquatting claims are filed along with trademark infringement claims.  Cybersquatters found liable under the ACPA are not subject to injunctions and do not pay money damages.

4.  Uniform Domain Name Dispute Resolution Policy

The Uniform Domain Name Dispute Policy ("UDRP") is a process administered by the Internet Corporation for Assigned Names and Numbers ("ICANN") for the resolution of disputes regarding the registration of internet domain names.  ICANN has the power to transfer a domain from a bad faith user to another who has good faith rights to the domain but does not have the authority to award money damages.

A person who has legitimate rights to a trademark that is confusingly similar to a registered domain name can file a complaint under the UDRP if they can establish three things.  First, the domain name must be confusingly similar to the complainant's trademark.  Second, Complainant must have legitimate rights to the trademark.  Federal trademark registration is substantial evidence of legitimate rights. Where a federal trademark doesn't exist, the complainant's rarely see success under the policy.  Third, the complainant must show that the domain registrant has no legitimate interest in the domain name other than to make a profit from selling it.  This "bad faith" element is proven by evidence showing the intent of her registration was for resale, the intent of the registration was to block the trademark owner from registering the domain name, whether the registrant is a competitor, or has some competing interest, and intent to confuse the public. 

The UDRP process is complicated enough to require an attorney, takes 6-9 months to complete, which is much shorter than litigation, and generally, costs about $1,000 in legal fees.  This procedure can be filed regardless of whether a lawsuit is filed in federal court.  And, if a trademark owner isn't successful, she can always file a lawsuit and try again.

5.  Sue Under the Trademark Anti-Dilution Act

There is another option.  You can sue under the Trademark Dilution Revision Act of 2006 ("TDR").  Under the TDR, domain registrants may be ordered to pay money damages to trademark owners where dilution of the trademark was likely by a member of the general public, rather than one in a niche market.  Trademark owners can go after registrants whose domains are not confusingly similar but dilute the overall distinctiveness of the trademark at issue.  The TDR is not a common cause of action for trademark owners because it's only available for famous marks whose owners are diligent at registering both their trademarks and desired domain names.  TDR lawsuits take 2-3 years on average to reach a resolution and are on par in cost to similar trademark-related litigation.

Ahaji Amos is a patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution.  This article is for information and advertising purposes and does not constitute legal advice.  No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients.  Ahaji Amos can be reached at ahaji@ahajiamos.com.  More information can be found at https://ahajiamos.com.

5 Reasons to Register the Trademark On Your Business Name

In the age of social media, most new business owners quickly become experts at branding.  Savvy marketers know how to develop a unique name, logo, and style that can direct customers towards their brand.  Significant resources are used to establish a social media following across more and more platforms including Facebook, Instagram, and Snapchat.  Despite launching carefully planned and costly marketing campaigns, many new business owners delay registering their trademarks, which leaves their new ventures vulnerable to losses and less valuable to investors in many ways.  Here are five reasons why entrepreneurs should register their trademarks with the United States Patent and Trademark Office (“USPTO”) as soon as possible.

1.  KNOW YOU ARE NOT INFRINGING ANOTHER'S MARK

When you file a trademark application, the USPTO vigorously examines it.  The USPTO has unbelievable access to information.  I'm often told by potential clients that they've already done a search, only to learn that they have no idea that the standard for trademark infringement is confusingly "similar," not the "same." That means that you need to search for marks in different languages, similar sounding marks, similar prefixes/suffixes, alternative spellings, oddball abbreviation, word/number substitutions, combined terms, etc.  Good trademark searches are quite involved.  If the USPTO issues your trademark registration, you can safely assume (and there's a legal presumption) that your use of the trademark won't' infringe another's right to that mark.  There is also a 6-month publication period after issuance wherein those that believe they have rights to the mark could oppose it.  Getting through the opposition period, as well as the examination serves as good evidence that your use of the trademark is both legal and non-infringing.  Without this stamp of approval, you are taking a gamble that you have rights to the trademark.  If you are right, great.  If you are wrong, you'll have to spend money defending yourself against the rightful trademark owner, and you'll have to spend lots of money rebranding, which ultimately confuses your customer base, which had associated you with your trademark.  Also, you'll likely be ordered to give up all profits earned by the use of the unregistered mark; and pay other damages, including punitive damages, fines, and attorney's' fees.  For that reason, investors are less likely to invest in companies that don't hold registered trademarks.

2.  PROTECTION FROM CYBERSQUATTING

Cybersquatting occurs when a company or individual registers a trademark or a domain name with no real intention of using it.   When squatters get wind of your great new product or business, they register your URL, and in some cases, register the trademark, placing you in a position of having to buy the URL or license use of that trademark from them at an unreasonable rate.  What's even worse, is that the good will you've developed is diminished because would-be consumers are being pulled away to websites and companies that are not affiliated with you or your product.  Can you get your URL and trademark back?  Possibly (there is a procedure available through the Uniform Domain Name Dispute Resolution Policy (“UDRP”)).  But, you'll have to spend money and waste a lot of time to do so.  Possession is nine-tenths of the law.  And, the procedures for doing this could take up to nine months.  While you are dealing with the troll/cybersquatter, your customers are looking elsewhere.  While there are procedures in place to prevent the practice under the UDRP, as well as the registration of domain names using a trademark owned by others, even in the absence of trademark registration, trademark owners are required to prove legal rights to the trademark.  Trademark registration serves as strong proof of the trademark owner's rights. Without registration, the trademark owner carries a much more severe burden of evidence, to the point that the failure to have registered the mark often results in a loss of the UDRP case.  In such instances, it is up to the trademark owner to show that consumers understand that the domain name is associated in the minds of the consumers as referring to the source of that mark, meaning the trademark owner and its products or services.  This standard is pretty high and often is impossible to prove.

3.  TRADEMARKS ARE VALUABLE ASSETS

Registered trademarks are assets.  They can be bought, sold, licensed, and used a security for a debt.  For a new business, trademarks can be the most valuable assets, as they help to establish the goodwill that is the cornerstone of a successful start-up.  Further, like most assets, registered trademarks may appreciate over time, becoming increasingly valuable as the business continues to grow.  Just think of how valuable these trademarks have become over the years:  Walt Disney, Apple, Nike Swoosh, Michael Jordan. 

4.  REGISTRATION IS NECESSARY FOR ENFORCEMENT

It's true that the mere use of a trademark provides its owner's limited common law trademark protection.  However, to enforce your trademark in a federal court of law, registration of the trademark is necessary.   Litigating federal trademark cases in federal court assures oversight by judges that are more familiar with trademark matters than those in the state courts.  Also, having a federally registered trademark provides the advantage of a legal presumption that you are the owner of the trademark, that the trademark is valid, and that you have the exclusive right to use the trademark nationally. The federal registration certificate provides a “stamp of approval” in the mind of a judge or jury that you are the rightful owner of the trademark.

5.  REGISTRATION PREVENTS OTHERS FROM USING YOUR MARK FOREVER

Registering your trademark give you the right to stop all others from using your trademark and any other trademark that is confusingly similar to it for as long as the mark is being used and maintenance fees are being paid.  By registering your trademarks federally, you preserve the right to expand your business into geographic regions of the country where you have not previously conducted business. If you do not have a federal registration and you have only used your trademark in, for example, Illinois and North Carolina, another person that later files an application for federal registration of the same trademark -- even after you had started use thereof -- can prevent your use of the trademark in any other state.  Moreover, five years after federal registration, trademarks become incontestable, which provides an abundance of protection during trademark infringement litigation.  Further, trademark registration is inexpensive.  The application fee can be as low as $225 per class, and most reputable attorneys charge under $1,000 to take care of the filing for you.  And, unlike copyrights and patents, they never expire so long as you use them.

Ahaji Amos is an intellectual property attorney with almost two decades of experience practicing patent, copyright, trademark, and trade secret law. More information can be found at www.ahajiamos.com.