EnTrends

(Rim Digest)

charter iCop member"

My primary motivation in writing this article is to help get the
word out about what has happened to Jan so that, hopefully,
those who do not know her will realize that she is, in fact, an
innocent victim in all of this and not some nefarious person who
gets her kicks from enticing people to visit a porn site when they
thought they were visiting an internet marketing site.

That said, what lessons can we all learn from Jan's experience?

Well, there are a few ...

1. KNOW WHEN YOUR DOMAIN NAMES EXPIRE AND
RENEW THEM BEFORE THEY LAPSE

First and foremost, know when your domain names expire and

take steps to renew them before they lapse. As Jan's experience
illustrates only too well, there are vultures out there just waiting
to swoop if you make even one false move. There are no second
chances in this business and, until the law catches up with the
reality of doing business online, it's every man and woman for
themselves.

2. SOME THINGS COST MORE THAN MONEY

The second point to note is that Jan allowed her registration to

lapse because she wanted to spend $10 rather than $35 (per year)
to renew the name. That decision cost her a whole lot more than
$25. Once your good name and reputation are cast into doubt, no
amount of money can get them back.

I know Network Solutions cop a lot of flak and possibly
deservedly so, if some of the stories I've heard are true. All I
know is that my domain names are registered and renewed with
them and I haven't had any problems (touch wood).

Bottom line, make sure your names are registered, stay registered
and that you use a reputable domain registrar.

3. KNOW YOUR RIGHTS

=> Domain Name Registrations Generally

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 NOT 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,