FW partner gives top legal tips for protecting your domain name

November 1, 2013

This article originally appeared in Contract Flooring Journal

Beware: Your website name can be stolen!

The internet is integral to almost every business and having a good domain name can be the key to success. Further, it can protect your brand online.

Due diligence

You should carry out domain name, trademark and internet searches to make sure that you do not commit to a name which could infringe a trademark, brand or copyright of a third party.

If you are forced to change the name, because it infringes the rights of a third party, then, aside from being a needless expense, having to re-brand could damage any goodwill you have.

First-come, first-served

No one has a right to a domain name and they are registered on a first come, first served basis. As domain names are case-insensitive, take care your name cannot be misinterpreted. Experts Exchange, a programmers’ discussion site, for a long time used expertsexchange.com, but later changed to experts-exchange.com.

Protect the brand

Registering domain names is one element of protecting a brand. However, it is also crucial to think about registering your brand as a trademark. Domain names do not offer any legal ownership rights as such, only a right to use the name for the period of the registration.

Trademarks provide the best legal protection for a brand, and are also valuable if someone – a cybersquatter – registers a domain name which conflicts with yours.

Cybersquatters register domain names either with a view to reselling them for a profit or as a means of securing pay-per-click advertising revenue from internet traffic.

With a registered trademark, it is much easier to defend your domain names under the Universal Dispute Resolution Procedures (UDRP).

Avoid typosquatters

Make sure you register all the main likenesses of the name, for example, hyphenated and non-hyphenated names, in all the key domain registries (eg .co.uk, .com, .eu etc).

You can also register common mis-spellings of your name to help to minimise the risk of ‘typosquatters’ (registering a domain name similar to the name of a known brand but with deliberate typographical changes).

Initial registration of domain names is relatively inexpensive, but if a malevolent third party or a competitor acquires a variant on your domain it can be difficult or expensive or even impossible to unseat them.

Make sure you are the registrant

Make sure your domains are registered in your own (company) name and not a third party. Failure here can be highly problematic when – for example – you want to sell the company and the registered owner will not co-operate, is no longer contactable or sees an opportunity to leverage a payment.

Keep contact details up to date

Make sure your administrative contact details are correct and up to date so that you can maintain the registrations and do not overlook renewal reminders.

If the renewal is sent to an old email address that is not in use, it may be overlooked. You could then lose your website and email services. Or worse, a third party could legitimately register the domain name when it expires.

Dealing with cybersquatters

If a third party has registered your brand as a domain name, the first step may be to issue a ‘cease and desist’ letter asking the other party to stop using the name and to transfer it to you. You may need to offer payment for the name to avoid legal costs of further action.

Failing that, where the third party registration can be said to be in bad faith, domain name disputes can often be cost-effectively and speedily resolved using the UDRP without the need to go to court.

Beware the scammers

You may receive communication from a domain name registration agent informing you that a third party is interested in, or just about to purchase, an internet domain name similar to that of your business.

They will tell you that they want to give you first refusal on the domain name but you must act quickly if you wish to secure the name.

The scam is that they will demand an excessive fee for a domain name when in reality no interested third party exists and you may not need the names in, say, China.

Another scam, known as ‘domain slamming’, seeks to trick domain owners into switching from their existing domain name registrar to the scammer under the pretence that it is simply a renewal of the subscription to the current registrar.

Buyer beware

Great care needs to be taken when purchasing a domain name from an unknown third party as frauds can occur and there is a risk that you can pay over money and not actually acquire the name.

In such cases, it is important to have a properly drafted legal agreement and use an escrow agent such as a law firm or escrow service to handle the deal safely.


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Nigel Miller
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nmiller@foxwilliams.com

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