I recently wrote a post about the new .XXX domain names which, while they are intended for use by members of the adult entertainment industry, could find themselves appended to your trademark or domain name if members of that industry choose to do so. I also wrote about how you could block this from happening.
This post raises a more general issue about cybersquatting, which is where someone adopts your name or trademark and uses it in his, her or its own domain name. As an attorney I don’t register domain names— Domain name registrars such as Network Solutions or Go Daddy are in the business of registering domain names. What I do do is assist clients in registering their trademarks and service marks. I am also in the business of protecting trademarks from infringement. Under the U.S. Anticybersquatting Consumer Protection Act, which is part of the federal Trademark Act, a trademark owner can bring a lawsuit against a domain name owner who registers, traffics in or uses a domain name that it identical or confusingly similar to a distinctive or famous trademark.
Lawsuits can be costly, and to be successful in establishing rights against a cybersquatter, your trademark should be distinctive and it should be in use prior to the date that the cybersquatter adopts it as his, her or its domain name. Therefore, when you are contemplating adopting a trademark or business name, if it’s a trademark I recommend that you file an intent-to-use application to register that mark with the U.S. Patent and Trademark Office to potentially reserve your rights in that name as of the date that that application is filed (The initial application fee runs $275.00-$325.00 for each product or group of related products or services) AND register your business and product name as part of both identical and confusingly similar domain names. See my prior post regarding .XXX domain names but you should consider registering .COM, .NET and, if you are in the U.S., .US domain names. You may also wish to consider registering .CO domain names.
When Amy Winehouse died last month, her father tried to set up a charity in Amy’s name only to find that those plans had been frustrated by a cybersquatter who had stolen the prospective organization’s proposed domain name address before he could do so. The names stolen included “Amywinehousefoundation.org.uk”, “Amywinehousefoundation.com”, and “Amywinehousefoundation.org.” Her father was quoted by Reuters last August 22nd as saying “Our solicitors are all over this, but it takes time. Meanwhile we can’t get on with [the] foundation.”
If you are starting a new enterprise or coming out with a new product, give me a call. You should protect your brand through trademark registration, obtain enough domain names and variations of your domain names to further protect your brand and establish an entity to protect yourself from legal liability in the future.
Start your business on a solid foundation and avoid potentially expensive “rehab,” which as “rehab” sometimes is, may be unsuccessful.
