FOUND THE PERFECT DOMAIN NAME? NOT SO FAST

You believe you have just found the perfect name for your business’s domain. Full of anticipation, you cannot wait to begin using if. However, when you check the domain registrar to perform a search, you see that your domain is not all that unique. Someone already is using it. So, now what? SELECT A DIFFERENT TOP LEVEL DOMAIN Perhaps the easiest solution here is simply to alter the Top Level Domain (TLD). So, for example, instead of selecting YYY.Com, you may decide to buy YYY.Net, or perhaps YYY.Org. Remember, while a .Com is perhaps the most classically well understood “ending” to a domain name, it is not necessarily better than any of the others. By selecting a .Org rather than a .Com, you can still keep the “base” of your desired domain name. SELECT A VARIATION OF THE DOMAIN NAME Suppose your initial idea was to purchase the domain name, IceCreamlove.com, in order to promote and sell your new ice cream company. However, you quickly discovered that someone else has already purchased that domain name. So, instead, you can simply adopt a variation of your domain name, and instead of registering IceCreamlove.com, perhaps you can register, IceCreamerylove.com. QUESTIONS YOU SHOULD ANSWER BEFORE CHOOSING A SIMILAR NAME Unfortunately, simply selecting a different domain name will not necessarily obviate the problem of Trademark infringement if you do indeed sell a similar good/service through your new, but slightly different, domain name. Before choosing a similar name or different extension, consider the following: · Will you be offering goods or services online that will directly compete with the services or goods of the other company that currently possesses the domain name? · Will your goods and services be distributed similarly to the company that holds the domain name you like? · Could your business possibly direct business away from the company whose domain name is similar? · Could visitors to the other site possibly end up on your site in error? · Is the other party’s name popular and well-known? If you find yourself answering yes to any of the above questions, using the same name with a different extension or using an almost similar name may cause confusion, which may lead to a lawsuit for trademark infringement. However, all is still not lost. Suppose for the moment that you already have a trademark, which you have put in use before the owner of the desired domain name bought, and registered the domain name. In this case, you have superseding rights to the domain name and can potentially have it seized from the competing registrant. FILING A CYBERSQUATTING CLAIM ICANN, which is the principal body in charge of the international registration of domain names, has set up a legal framework to guide the various rules and restrictions surrounding domain names, called the Uniform Domain Name Dispute Resolution Policy (UDRP). Principally, the relevant idea here is that if you can satisfy the three-prong test which is ultimately designed to show illicit use of the domain name by the registrant of the domain name, you can potentially have the domain name transferred to you. If instead, you file a lawsuit (rather than a UDRP Complaint) for trademark infringement and win, the court will order that the domain name be transferred to you. A winning case is always a strategy, albeit an expensive one, to obtain the domain name you want, even if you do not first avail yourself of the ICANN resolution process. Additionally, by filing a lawsuit for cybersquatting with the court system, you may be able to win monetary damages, which would otherwise be unavailable if you were to just go through the UDRP Process. JUST GET STARTED The first step, of course, in managing a domain name issue and/or Cybersquatting claim is ascertaining who the owner of the domain name actually is. To learn the address and name of a domain name owner, you may check www.whois.net. The website will give you all the contact details you need – the name, phone number, email address, and address of the domain registrant. In some cases, you won’t need to file a lawsuit or even UDRP Complaint. It may simply be sufficient to send a reasonably forceful letter to the owner of the prospective domain name and assert your claim to the name and explore negotiable terms. Perhaps after learning of your trademark rights, the owner will agree to let you purchase it for a nominal fee. If not, you may very well need to take legal action. Ultimately, it may be best to pick a new domain name all-together. No matter what you decide, weigh your options carefully.