Protecting a business's good name:

Fighting back against domain name infringement

As internet use and e-commerce grow, businesses are encountering more and more cyber squatters who register variations of well-known business names, web addresses, and trademarks. Domain names similar to an existing trademark or business name can wrongfully divert potential customers or clients away from a business's own web site to the competition. Some cyber squatters intentionally divert customers to their own companies, while others generate income from click-through fees they are paid each time a web user clicks a link. These cyber squatters register a wide variety of domain name variations. For example, if the Acme Safe Company has registered the domain name acme.com, cyber squatters will register domain names such as acme.net, acme.mobi, acme.us, acmesafe.com, acme-safe.com, akme.com, and akmesafe.com. In addition to diverting potential customers, web sites that incorporate or misspell a company name or trademarks can dilute the company's rights in its own marks, particularly if the company does not take action against those responsible for the abuse.

We have successfully forced cyber squatters to cease their infringement and transfer hijacked domains to our clients. Such efforts to protect trademarks begin with online searches for infringing domains. We are able to obtain domain search reports from one of the country's leading trademark research firms. For a flat-fee as low as $145 per name or mark, a basic search will identify up to 75 registered domain names that are highly similar to a particular business name or trademark. More detailed, structured search options also are available. We then analyze the search results, review the associated web sites, and provide a list of domain names for possible further action.

Once infringing domains are identified, our clients can choose which infringers (if any) are to be sent demand letters. Then we customize cease and desist letters to the selected cyber squatters, based on the domain names they have registered and the contents of the associated web sites.

If a cease and desist letter is not effective, we can file a complaint to initiate an arbitration process against a cyber squatter. We work with our clients to evaluate whether arbitration proceedings are recommended. In an effort to keep legal fees low, our intellectual property attorneys supervise a paralegal who conducts some of the research and drafts cease and desist letters and arbitration complaints for attorney review. This streamlined process can then lead to a decision forcing the infringer to surrender the infringing domain. We have been successful in capturing numerous domains through the World Intellectual Property Organization and National Arbitration Forum. See, e.g., Publix Asset Management Co. v. Chen, Claim No. FA0802001155659 (Nat'l Arb. Forum April 22, 2008); Bond & Co. Jewelers, Inc. v. Texas Int'l Property Associates, Claim No. FA0703000937650 (Nat'l Arb. Forum April 30, 2007); Priority One Financial Services Inc. v. Cronin, Case No. D2006-1499 (WIPO March 5, 2007); Publix Asset Management Co. v. Click Cons. Ltd, Claim No. FA0612000874479 (Nat'l Arb. Forum Feb. 13, 2007); Publix Asset Management Co. v. Administrator, Claim No. FA0611000842940 (Nat'l Arb. Forum Jan. 4, 2007); Publix Asset Management Co. v. SZK.com, Claim No. FA0611000839802 (Nat'l Arb. Forum Dec. 21, 2006); Kforce Inc. v. Belize Domain Whois Service Ltd., Case No. D2007-1317 (WIPO Oct. 31, 2006).

To watch for future attempts to register variations of established business names or marks, we also recommend a domain name registration watching program. Our research firm will monitor each company name or mark for approximately $200 per year and generate weekly notices concerning newly registered domain names similar to that name or mark that end in .aero, .biz, .cat, .com, .coop, .info, .mobi, .name, .net, .org, .travel, and .us. We review the watch notices and advise of any newly registered domain names that merit the client's attention.

The internet can help or harm a business. Fortunately, intellectual property laws provide trademark owners with tools to protect business names on the web. For more information, contact a Thomas & LoCicero attorney at 813-984-3060.