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What to do if someone has a domain name you need

Who has rights to coined phrases and company names?

     

webmarketer1

12:39 am on Feb 1, 2005 (gmt 0)

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Can anyone point me to some information about laws regarding domain names? If someone is using your company name or a phrase that your company uses, and they are not using the URL (the specifed server can not be found when you enter the URL) but they do own it, what do you do? Has anyone dealt with this? Any advice is appreciated.

Thanks!

2:09 am on Feb 1, 2005 (gmt 0)

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Post you question in the legal section at dnforum dot com. There are actual lawyers that frequent that section and some very knowledgable domainers there also.
ED
2:39 am on Feb 1, 2005 (gmt 0)

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I don't think the kind of general advice available from forums - including ours here - is what you need. I'd suggest you retain your own legal counsel - someone who specializes in intellectual property issues, trademarks, etc. Then you can really get into the details specifics.

There are many variables in each domain name situation and each one may or may not apply in any particular case. Certainly your trademark or service mark registrations enter into the, as well as how long you have been actively using the marks. But those are national standards, and the web is international.

If you're serious about protecting your Intellectual Property, you do need your own legal counsel.

2:58 am on Feb 1, 2005 (gmt 0)

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there is actually some sort of formality from ICANN that goes with this (I have not used it), but the outline can be found here:

[icann.org...]

3:17 pm on Feb 1, 2005 (gmt 0)

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Follow the advice about proper legal representation and do a little research (not in forums but at law school sites, law review sites, government sites) about the travails of company names that employ popular phrases as their moniker.

I love companies that call themselves things like InternetMarketing, Inc. - or name their enterprise by adopting as their title some industry's generic operative phrases - thinking that will give them the right to claim exclusive use of the phrase in a domain name. Geez, I think I'll call myself Landscaping, Inc. or FuelAdditive, Inc. or UsedCars, Inc. or CarPart, Inc. You get the picture? Try Googling the "company name" and if the search results are in the 1000s you might anticipate trouble based upon prior art, so to speak. (Again, run it past your well paid IP lawyer.)

I swat the occassional ill-advised or misguided souls, who approach me with such ridiculous contentions, like flies. (I own a few domains - all generic - and I've practiced law for 20+ years, which usually comes as a surprise to some wannabe bullies or buffoons.) There's plenty of precedent for the award of attorney fees or money damages for what is called "reverse domain hijacking" (abuse of process, frivilous claims, etc.) where someone files a claim for a domain that is obviously a generic word or phrase.

Take a look at the WIPO domain arbitration decisions for a bit of guidance.

3:23 pm on Feb 1, 2005 (gmt 0)

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It comes down to trademark law. If you have a trademark maybe you can reclaim the domain. If they also have a trademark, maybe you can't. Since trademark law is complicated the advice of other posters is correct; you'll need a lawyer.
3:39 pm on Feb 1, 2005 (gmt 0)

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Actually, from what I've seen, domain disputes are not so much about the nuances of trademark law - which nuanced disputes will kill most people financially, since such do require legal assistance - but about overreaching, where lawyers will nonetheless weigh in for a fee.

Take a look at the WIPO decisions. Most are about either someone plainly latching onto an obvious mark (Pepsi, Disney) OR about some company attempting to gain control of a generic word or phrase, such as "lending".

So, yes, talk to a competent lawyer and expect to pay easily $500-2,000+ for a formal (introductory) analysis and, while you're pondering laying out that kind of money there's plenty of qualified reading you can do online - like reading the WIPO domain decisions. The principals articulated in the written and published online opinions aren't entirely beyond the ken of intelligent laymen. Take a look.

You can do a lot to educate yourself before committing to spending a good deal of money and the best education you will get is not by reading opinions posted in forums, except perhaps, when those opinions point you towards more legitimate sources of self-education, such as WIPO opinions, law reviews, government websites, etc.

Heaven forbid I should deprive my legal colleagues from making their coin.

Equally, heaven forbid I should convince someone that answers to complex legal questions can be resolved without speaking to competent counsel.

However, a well self-educated AND circumspect and deferential client is often the very best client to be and to have.

7:10 pm on Feb 1, 2005 (gmt 0)

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Why not just ask the guy if he's not using it would he like to sell it? It might save a lot of time and cost.
8:36 pm on Feb 1, 2005 (gmt 0)

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I recommend going to www.godaddy.com and then to who is. Check who the domain registrar is and check to see when the domain expires. If it expires soon simply go back to godaddy and sign up to have them keep an eye on it for you, they will grab the domain as soon as it becomes open.
10:12 pm on Feb 1, 2005 (gmt 0)

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The laws vary from country to country as well.