by: Dr. Peter Liu
Domain Dispute is no longer news unless a Madonna or Julia Roberts type of celebrity gets involved. However, greater now than ever is the risk for domain registrants to lose their domain names when they get involved in a domain dispute. The risk is originated from the Uniform Dispute Resolution Policy (the Policy) approved by ICANN and the Anticybersquatting Consumer Protection Act (ACPA) passed by U.S. Congress. The direct risk comes from reverse domain hijackers, biased panelists, and the unprepared registrants themselves.
Innocent registrants are prone to ignoring measures to protect their domain names. They tend to think they are safe and would win even if some party would complain to WIPO-the worst arbitration organization for innocent registrants. Thus, they often do not take steps to protect their domain names. As a consequence, they are likely to lose their domain name(s) in a domain dispute. Preparation both BEFORE and AFTER you receive a complaint is equally important. Generic domain names are no exception. Net-firms.com (usid.com received a complaint from netfirms.com) and netlearning.com (the registrant received a complaint from NetLearning, Inc.) are just two examples proving how easy it is for a common word domain name to get hijacked.
The following suggestions may be useful when preparing yourself for a potential battle for your domain name(s).
1) Make sure your domain record, including the ownership and administrative contact information, is complete, correct, and current. If it is incorrect, the panelists will take it as evidence against you. Therefore, check your domain record often to see if any change is made without your authorization.
2) Write down your idea or business plan about what you would use your domain for and get it notarized.
3) If possible, register your domain name, i.e., yourdomainname.com, as a trademark with the trademark authority in your country. If you registered your domain name as a trademark successfully, it is to your advantage. Once you establish your rights to your domain name(s), your domain name is entitled to legal protection even if it is stolen.
4) If you start up a business, register and or use your domain name as your business name, if possible. Use your domain name with the TM sign on your letterhead, envelope, business card, or wherever possible. When you design your web site, make sure to put the TM sign with your domain name. Print a copy and have it notarized by a local Notary Public. If your site is designed by others, make sure to get a certificate that shows your domain name on it.
5) When you do advertising, make sure your domain name shows up in the ad. If you do online advertising, even with goto.com, print a copy of your link ad that is properly dated. Keep a copy of that ad and all communications between you and your ad service provider as evidence.
6) If you are not planning to use your domain name in the near future, register it as an intent-to-use trademark with your trademark authority. For coveted domain names, i.e., mostly single worded and popular, yet generic names, you may not be able to get them registered as a trademark. For those domain names, use them as soon as possible for any legitimate purpose, such as for business, non-profit, or even a personal or fun activity.
7) When using a domain name, try to use a fee-based web hosting service that would enhance the impression of seriousness of your business. Free web hosting is costly because it will harm your business in various ways.
8) Never merely put simple links on the pages and never link your domain to porn sites. By doing so, you will be doomed if you come across some self-authorized or puritan panelists.
9) If you consider selling your domain, do not sell it until you establish your rights to it. When you receive any offer to purchase your domain name, do not answer unless you know who the person is. The inquirer may be a spy. Again, talk to a lawyer if possible before you do anything.
10) When challenged directly by a company or individual, you should never answer until you consult a legal professional. Any of your good-willed answers may be used as evidence against you later or help your challenger to shape a plan against you. Do not put out a web site for your domain in a hurry as a response to the challenge you receive. Such an action may prompt some panelists to believe you have done some thing wrong.
11) When you receive a complaint from WIPO, you should RESPOND if you want to defend your domain name(s). Many panelists would treat you lightly and rule in favor of the complainant if you fail to respond. If your domain name is critically important and you are well financed, hire a COMPETENT lawyer! The fee can be anywhere between $1500 and $5000 per response. Or, some lawyers will charge on an hourly basis, usually between $200 and $500 per hour. Do some searching and ask for references when you choose a lawyer. Furthermore, you should consider paying $1500 to have a three-panelist panel. With WIPO, you are likely to lose if only one panelist is assigned to your case. When you request three panelists, you have the right to designate one panelist for the dispute panel. By carefully choosing a registrant-friendly panelist, you will increase your likelihood of winning.
12) If you lose at WIPO, you have 10 days to appeal to your local federal court or the court that has jurisdiction over the registrar. 13) If the challenger goes directly to court to sue you, you should file your response timely. Do not get scared because the plaintiff may do this simply as a tactic to scare you by the fact that a court action is more expensive than dispute arbitration. The most important thing is to establish your rights to your domain name. Keep any and all evidence that is indicative of your using your domain name for a legitimate activity. And finally, be careful to avoid the traps that would endanger your rights to your domain names.
The tips in this article are intended for reference only and should not be construed as legal advice.