As a general rule, you can register any domain name that is not
already registered (subject to trademark considerations
discussed below). If your domain name is sufficiently
distinctive, for example, jtdbizopps.com, the bit before the
.com may also be a common law trademark (unless, of course, it's
registered and then it's a registered trademark). If you DO have
a distinctive domain name, then the discussion in the next
section applies to you.
If you don't have a distinctive domain name, however, and by
this I mean a name that is "descriptive" or in general usage,
for example, "home-business.com", then this name will be neither
a common law trademark nor a registrable trademark.
In this case, once you've lost your domain name registration,
you are, not to put too fine a point on it, screwed. You don't
have much in the way of recourse other than for the "generic"
legal avenues which may well be too expensive for you to pursue.
These avenues are discussed below.
=> Domain Names and Trademarks
On the other hand, if you have a distinctive domain name (i.e.,
one that is not in common usage), then that name is also likely
to be a common law trademark (unless, as stated above, you've
registered it, in which case it's a registered trademark. And,
if you do have a common law trademark, I would recommend that
you register it. Registration can only strengthen your position.)
The law generally sides with the pre-existing trademark owner
over the domain name holder. In addition, the U.S. has enacted
the federal Anti-Cybersquatting Consumer Protection Act (the
"Act"). Under the Act, you can sue a cybersquatter to get back
your domain name and sometimes damages to boot. So, what's
actionable under the Act? Here's an extract from the Act itself:
"A person shall be liable in a civil action by the owner of a
mark, including a personal name which is protected as a mark ...
if, without regard to the goods or services of the parties, that
person
(i) has a bad faith intent to profit from that mark ...; and
(ii) registers, traffics in, or uses a domain name that
(I) in the case of a mark that is distinctive at the time of
registration of the domain name, is identical or confusingly
similar to that mark; (II) in the case of a famous mark that is
famous at the time of registration of the domain name, is
identical or confusingly similar to or dilutive of that mark; or
(III) is a [registered] trademark ..."
In terms of what constitutes "bad faith", the Act provides that
the court may consider factors (among others) such as:
"The person's [i.e., the alleged cybersquatter's] intent to
divert customers from the mark owner's online location to a site
accessible under the domain name that could harm the goodwill
represented by the mark, either for commercial gain or with the
intent to disparage the mark, by creating a likelihood of
confusion as to the source, sponsorship, affiliation, or
endorsement of the site; and
"the person's offer to transfer, sell, or otherwise assign the
domain name to the mark owner or any third party for financial
gain without having used, or having an intent to use, the domain
name in the bona fide offering of any goods or services, or the
person's prior conduct indicating a pattern of such conduct."
A common problem is identifying the culprit. In Jan Tallent-
Dandridge's case, for example, the only information about the
perpetrator is:
offers@NameRegister.com Registrant: Dave Web
(JTDBIZOPPS-COM-DOM) Buy This Domain 5 Tpagrichnery St ., # 33
Yerevan, Armenia 375010 AM 208.978.3555 208.978.3555
offers@NameRegister.com
Call me skeptical, but somehow I doubt that's a real name and
address. Fortunately, the Act has anticipated this problem:
"The owner of a mark may file an in rem civil action against a
domain name [an "in rem" proceeding is an action against the
thing rather than against a defendant - in this context, it
means that the court can make an order in relation to the domain
name itself rather than against Dave Web personally such as
ordering him to surrender the domain name] ... ".
And as for remedies, assuming you are able to identify your
particular scumbag, these include injunctions and damages
(either actual or, in a case where your individual name is at
issue, statutory damages of between $1,000 and $100,000 per
domain name).
=> Generic Legal Avenues
Whether or not you can pursue an action under the Act, there are
a number of legal avenues open to anyone in Jan's situation (and
by that, I mean, someone who is using the domain name to point
to a site that damages your reputation).
First off, let's recognize this practice for what it is.
Extortion. Pure and simple. It's a crime. So is criminal
defamation. Write a strongly worded cease and desist letter to
the offender, threatening to report them to the District
Attorney and/or the police and the Federal Trade Commission as
well as instituting a civil suit. You are more likely to get a
result if the letter comes from your attorney.
If the offender doesn't comply, report them. As for what action
will be taken, your guess is as good as mine but at least you've
done what you can.
If you have the resources to do so, you can also bring civil
proceedings against the offender on the same grounds. The
conduct in question is egregious enough that you may well get
punitive damages awarded in your favor.
Finally, and I HATE to even suggest this, the most
cost-effective option of all may be to pay what is demanded.
That at least gets the domain name back under YOUR control where
it belongs. And there's nothing to stop you turning around and
reporting the individual in question to the DA, police, FTC
etc.. In fact, paying over the money may be your best chance of
identifying the perpetrator so you can initiate a criminal
prosecution.
Of course, all of this is damage control which is a VERY poor
substitute for prevention. So go back to Item 1. and calendar
your domain name due dates to avoid getting into this mess in
the first place.