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Bar News - March 8, 2002 A Lesson Learned: Protect Your Domain Name By: Robert B. Gainor MY WIFE, LOCAL stained glass artist Jennifer Mitchell, lost her thriving Web site address to a Malaysian Web site promoter, who in turn used it to direct Internet traffic to one of the largest commercial sites on the Web. The automatic purchase of popular, but temporarily unclaimed, domain names is a little known but growing practice against which there are limited legal remedies. My wife’s business is selling her handcrafted glass mobiles and flowers. In addition to trade shows and galleries, the Internet is an important venue for this business. Two years ago, we registered her domain name, and since that time we have built her site and her business’s presence on the Web. E-business is fun and exciting – getting orders from strangers who liked Jennifer’s work enough to send their credit card information to an unknown artist – as was getting wonderful compliments after they received the art. She has made hundreds of online sales to people all over the country. Of course, having a decent Web site and product was important towards the success, but more so was getting her top placement in the major search engines. That was hard work. In mid-November, I clicked to her Web site and was routed to Half.com, an E-bay company. What had happened? The month before, we had received an invoice from our Web site hosting service informing us that we had to pay a small fee to renew our domain name. In the midst of preparing for her holiday shows, we did not pay the renewal fee on time. I attempted to re-register the name on the day it expired, but was too late. Someone had immediately purchased our domain name, and it appeared to be Half.com, a major commercial Web site. The site Register.com is a broker of domain names; you can register to acquire selected Web sites the second they expire. "Of course it’s legitimate to buy an expired domain name, but the people who snapped up Jennifer Mitchell’s Web site address weren’t buying it so they could sell stained glass mobiles. They just hoped to redirect unsuspecting Internet users to a site where they might be lured into buying something," said Doug Roberts, publisher of PortsmouthNH.com, a regional Web site. It could have been worse. "One nonprofit group on the Seacoast lost its address the same way," Roberts recalls. "Now when you type in its old address, you end up at a porn site." I e-mailed Half.com a cease-and-desist letter, alleging that our business’s expired domain name was being used in a way that was likely to cause confusion, which would be a violation of Jennifer’s service mark. We had used the business name Stained Glass Mobiles on stationary, business cards and as the header on our Web site. Such a use, over a two-year period, will give grounds to claim a service mark in that name, said Franklin Pierce Law Professor Susan Richey, who specializes in copyright and trademark law. To gain the greatest protection, one should federally register her service mark, according to Richey. Chief legal counsel for Half.com informed me that the company did not own our old domain name. However, it did have a contract with the Malaysian business that purchased our old domain name to route traffic to Half.com. Counsel for Half.com stated that the company does not control the manner in which these affiliates direct traffic to its site. Half.com terminated the contract with the Malaysian company, and our old domain name no longer routed people to Half.com. Half.com, like many other Web sites, enters into contracts to direct Internet traffic to its sites. The company pays these promoters each time a Web surfer clicks to its site, or pays a percentage of any sale generated by the click. Increasingly, some of these promoters buy expired domain names that have good positioning in search engines or those that have descriptive names, like our former domain name. I e-mailed the new owner of our old domain name to see if I could buy it back for a reasonable price. In a series of e-mails, the new owner, in broken English, had some unkind words about my complaining to Half.com. He would not sell. I advised him that I would be vigilant in protecting Jennifer’s trade name. So far, the old domain name has been inactive. An option for getting the site back was to file for arbitration with ICANN, the Internet Corporation for Assigned Names and Numbers. This arbitration is conducted over the Internet. To prevail, I would have to prove the following three elements: 1.) The domain name is identical or confusingly similar to a trademark or service mark to which we had rights; 2.) The present owner has no rights or legitimate interests in respect to the domain name; and 3.) The domain name has been registered and is being used in bad faith. The only remedy available in this proceeding is the return of the domain name; no damages are available. Under these facts, there is a reasonable likelihood of prevailing with an ICANN action, said Professor Richey. She added that individuals who buy expired domain names to promote other sites often default. The filing fee for arbitration is approximately $1,000. This cost is prohibitive to many small businesses. On balance, since we are slowly re-emerging in the search engines under a new domain name, arbitration would not be cost-effective at this time. A court action could also be filed in federal court, which would be even more costly. In time, our old domain name will fall out of the search engines. It will take several months to get the search engine positioning for the new domain name for my wife’s business, www.glassmobiles.com, that we had for the old one. Through this experience, we lost some business and learned more than we ever wanted to about domain names, service-mark infringement and Web promoting. And come renewal time for glassmobiles.com, there will be no late payments. Robert Gainor teaches law at the University System of New Hampshire’s College for Lifelong Learning and is a hearings examiner for the NH Department of Safety.
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