Guest post by John Rees, Attorney, Callister Nebeker & McCullough
Domain names are alpha-numeric addresses that direct users to websites. Unlike other rights regarding other property, domain name registration rights are limited and revocable. As a result, protecting domain name rights is critical to any business with a web presence. In today’s environment, that includes most businesses.
Real property has a title associated with it, and the owner of the real property has the exclusive right to use the property, sell the property and further develop the property. The property rights never terminate. Although the property may be subject to the rights of a lender, an easement holder or the government for taxes and assessments, the fundamental property rights vest in the owner.
Domain name rights are very different. Domain names are registered to a registrant by a registrar, such as GoDaddy or Network Solutions. The domain name registrant does not have property rights, but instead has contract rights. When a domain name is registered, the registrant agrees to comply with the contractual terms and conditions established by the registrar for the use of the domain name. The terms and conditions will include a specific time that the domain name will be registered, and it will include terms under which disputes over domain names may be resolved.
With these basics in mind, protecting domain names is different from protecting rights in real property. Domain name rights are only as valuable as the rights of the registrant under the contract whereby a domain name is issued or registered. Here are some practical tips on protecting your domain names:
1. When a domain name is registered, the registrant is required to provide the name of the registrant, and the administrative and technical contacts. These are the people who may exercise the rights of the domain name registrant. If the name of the registrant and the administrative and technical contacts are not accurate, the domain name registrant may lose value rights in the domain name. Make sure the name of the registrant, administrative contact, and technical contacts are persons controlled by the domain name registrant. Failure to take this step could lead to the inability to change where the domain name is directed or to otherwise maintain the domain name. Websites are moved from time to time to different hosts or servers. If the registration information is not correct, the owner of the website may not be able to move the website, and may in fact, never have rights to the domain name.
2. Domain names usually become trademarks and trademarks are used as or in domain names. It is critical to make sure the registrant has cleared the domain name for trademark use and registration, and for potential infringement. If a domain name infringes on the trademark of another, the registrant could be forced to shut down the website associated with the domain name, or adopt a new domain name. Like trademarks, substantial goodwill can become associated with domain names.
3. Obtain federal trademark registration for the domain name, or at least the domain part of the domain name. The Anti-Cybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy both provide remedies for trademark owners where domain names are registered in bad faith in connection with such trademarks.
4. Typosquatting is the practice of registering domain names by third parties which are off by a letter or two from the original domain name. The typosquatter then derives traffic from the original domain name. If the typosquatted name is infringing, the registrant may be able to force a transfer of the domain name, but another way to avoid having to take action is to register a variety of iterations of the domain name to help avoid typosquatting. It would be impossible to avoid any potential typosquatting, but the more similar domain names that are registered, the lower the risk of typosquatting.
5. Purchase long-term contract rights. Not only are longer-term contracts less expensive on an annual basis, but they reduce the risk of the domain name expiring without being renewed.
Unfortunately there is no easy way to protect domain names from the many possible challenges that can arise. Generally speaking, each domain name owner should adopt a practice for protecting domain names and avoid the potentially catastrophic results of failing to take appropriate action.
John Rees is a business lawyer with the law firm of Callister Nebeker & McCullough who helps clients find solutions to their business legal needs, particularly in a complex legal and business environment. He focuses on corporate and intellectual property issues, particularly relating to licensing and doing business on the internet.