How to Protect Your Site's Online Name, Reputation
One of the owner’s most valuable business assets is the site's reputation. That's why it's important for you to protect and control the use of your site's name. If you have a Web site, you may use it as an internal communications tool for informing residents of events and special information, or a way for residents to alert you of problems in their units. But it also gives an impression of what your site is like, allowing prospective residents to decide whether they might want to live there.
Therefore, it's important that your Web site not only give accurate information but also prevent others from usurping its logos. For example, a developer or another owner near your site might use a logo on its Web site that's similar to your logo, to indicate an affiliation or extension of your company or site, says Colorado attorney David Firmin.
Allowing another person or entity to use your site's identity weakens your control of how your site's reputation is perceived and used. Fortunately, there are laws to protect a site's name and related trademarks from being used by others without permission.
We'll give you a Model Letter: Send Trademark Infringer “Cease-and-Desist” Letter, which you can adapt for use if you find a Web site that poaches your site's reputation.
Register and Check Domain Registration
When someone creates a Web site, he must also register a domain name. You should register a domain name as soon as possible to prevent confusion on Web searches and to keep others from using the same name. You can register a domain name and an Internet Protocol (I.P.) address with the International Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization that oversees the allocation of domain names, and arbitrates disputes over their use.
You should register your domain name through a reputable ICANN registrar, so that you actually own the name, and not a company that registers the name on your behalf, says Firmin. If your company already has a Web site, make sure you own the domain name. It’s common for domain names to be owned by the Web site designer or an Internet service provider.
It’s easy to determine who actually owns a domain name, by going to the Whois Database of Network Solutions at www.networksolutions.com/whois/index.jsp or www.better-whois.com. The Whois database is maintained by all registrars, and lists pertinent information about all domain names. Once a domain name is entered as a search query on these sites, the search results will display the following information about the domain name:
Registrant. The person or entity that owns the domain name;
Administrative contact. The person designated to receive communications from the registrar related to the administration of the domain name;
Billing contact. The person designated to receive notices from the registrar concerning renewing the domain name by paying the registration fee;
Technical contact. The person designated to receive communications related to technical matters associated with the domain name;
Record expiration date. The date the domain name will terminate and be revoked unless the renewal fee has been paid; and
Record creation date. The date the domain name was first issued to the registrant or the registrant's predecessor.
By taking the time now to check the ownership record of your domain name, you may prevent the loss of your domain name in the future. If the incorrect owner is listed on the Whois database, transferring the domain name to the correct owner is merely a formality—as long as the listed domain name owner cooperates.
When a person or entity registers a domain name that’s similar to your company's name, or uses your site's logo and name to trick prospective residents into going to his Web site instead of to yours, you might be able to sue for trademark infringement. Assuming that nobody else has previously registered or is currently using the company's name and logo, once a site begins using its name as an identifier to the public, the site has probably acquired trademark rights to its name based on use.
Even though a site may have trademark protection based on first use, register your company's trademark with the appropriate state agencies if the company hasn’t done so. In addition to providing public notice of the company's ownership claim to its name and logo, filing the mark can formally legalize the ownership rights.
Recovering Domain Name from Infringer
On a federal level, the Lanham Act, the federal trademark statute, and the case law interpreting it place a duty on trademark owners to take appropriate action to protect their trademarks when they discover infringement. A trademark owner can lose its rights in a mark permanently if it doesn’t take necessary protective action to prevent infringement and improper use of the trademark. Similarly, individual states may obligate trademark owners to take protective action. Ask your attorney whether such duties exist in your state.
Faced with a nearby developer leeching off your site's good name, here are two cost-effective actions you can take.
Send “cease-and-desist” letter. The first step in taking legal action against an infringer is to send the infringer a letter known as a “cease-and-desist” letter. This letter states your ownership of the trademark. It clearly explains to the recipients that they’re infringing on your trademark and causing damage. It requests that they immediately cease using the mark and not use it in the future.
If their domain name is infringing, the letter asks them to transfer the domain name to your company. The letter also states that if the recipient doesn’t take the action demanded, you’ll turn the matter over to your attorney to take appropriate legal action.
File ICANN arbitration action. All registrants/owners of domain names are subject to an arbitration procedure known as ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). UDRP is a good tool for trademark owners to obtain ownership of infringing domain names relatively quickly and cheaply.
A UDRP arbitration can be filed and won, and the infringing domain name transferred, within 50 to 60 days. The only documents a trademark owner files are a complaint and an optional reply to the domain name owner's answer to the complaint. The domain name owner has 20 days to file an answer, after which the arbitrator must rule in 14 days.
If the trademark owner wins, the domain name will be transferred to the mark owner within 10 days of the decision, unless the domain name owner files a lawsuit within the 10-day period in the appropriate court, seeking to prevent the transfer. This method is much less expensive than an infringement lawsuit because it doesn't require discovery, briefs, trial, or appearance before the arbitrator.
Haphazard use of a company name can have a bad effect on a site's reputation and the spirit of its employees. A disgruntled ex-employee or competitor who registers a domain name and creates an unauthorized Web site with your site's logo and name is wrong to assume that by simply registering domain names, he has ownership rights to the name and can fend off anyone else who asserts rights.
The trend in the law is to award transfer of domain names from domain name registrants to the actual trademark holders. This is good news for owners and companies that are vigilant about safeguarding their good name.
- Lanham Act: 15 USCS §1125.
David Firmin, Esq.: HindmanSanchez, 5610 Ward Rd., Ste. 300, Arvada, CO 80002; http://www.hindmansanchez.com.
See The Model Tools For This Article
|Send Trademark Infringer "Cease-and-Desist" Letter|