Perhaps you’ve seen the e-mail. It arrives in your in-box from an official sounding domain name registrar you’ve never heard of and it exudes the tone of a concerned corporate citizen, a Good Samaritan, who is urgently trying to confirm some information.
The body of the e-mail will usually say something like “we’ve received an application from XYZ Company who has applied for the following domain names.” You scan the list and discover twenty variations of your brand name or your company name with assorted country extensions. The e-mail then goes on to say that they realize that you, not XYZ, are the trademark holder of those names and they’re wondering whether you’ve authorized XYZ to register them.
“Of course not,” you reply. “Stop them.”
The “registrar” then says since domain name registrations are open to the world, XYZ has a legal right to apply for the available name. You only get the first right of refusal. If you think those names are important to your company they’ll grant you the privilege of exercising that first right refusal. If you don’t exercise it, they’ll view it as a waiver of your legal rights.
Have they made you, in the words of The Godfather, an offer you can’t refuse?
The proliferation of domain name extensions creates a dilemma for trademark holders. You don’t want anyone diverting Web traffic to a site you have no control over. You also don’t want some wacky Web site trading on your company’s good will, tarnishing your reputation, or diluting your trademark value. At the same time, new domain levels can create multiple combinations and misspelled permutations of any single name. If you have multiple trademarks the problem grows exponentially. How can you possibly register every combination and variation? The answer: You can’t.
But don’t dispair. Obtaining domain names in bad faith, for the purpose of extorting money from a rightful trademark holder, is illegal. There are methods available to combat unscrupulous individuals and organizations who obtain domain names that include your registered trademarks. ICANN (Internet Cooperation for Assigned Names and Numbers) has established a Uniform Dispute Resolution Policy (UDRP) to help you deal with such situations. Follow this link for answers to frequently asked questions about UDRPs.
In a situation such as the e-mail scenario described above, where the domain has not yet been purchased, you can still fight back. You can, for example, send a formal letter to the “registrar” that effectively puts them on notice of your legal rights. You might also want to let them know that if they continue to facilitate or assist an unauthorized third party to secure a domain name containing your trademarks that they do so at their own risk and that you’ll hold them legally liable for any costs or expenses associated with having to take legal action against the third party to enforce your rights. Now, they’ll have some skin in the game.
They might still ignore you. But, at least you warned them and now you have more ammunition to use against them if you’re forced to take further action.