Still Squatting After all these Years? (Whether you know it or not!) By Karen J. Bernstein, Esq – Guest Blogger
These days, sophisticated web users understand and respect the fact that they can’t register domain names that belong to individuals or businesses who own trademarks (like McDonald’s or Starbucks), in hopes of later selling the domain names back to them for large sums of money. Beyond being morally questionable, this behavior is illegal.
Commonly referred to as “cybersquatting,” in the earliest days of the Internet (circa 1996), this kind of behavior was common place, and no one was policing these renegades on behalf of brand owners. Over the years, however, trademark holders became incensed by the outrageous sums of money that “cybersquatters” were extorting from them, so they went to the legislature to stop those types of activities.
In 1999, with mounting pressure over how to enforce trademark holders’ rights against squatters, the Internet Corporation for Assigned Names and Numbers (ICANN) through the World Intellectual Property Organization (WIPO), an organization created by an international treaty signed by numerous countries, created the Uniform Domain Name Dispute Resolution Policy (UDRP). This is an administrative proceeding set up solely for the purpose of considering whether a domain name should be transferred to the trademark holder or canceled (i.e., removed from the domain name registrant and then made available to the public).
The UDRP makes sense because it enables trademark holders to bring domain transfer suits against domain name registrants who reside anywhere in the world without having to go to the domain name registrant’s country to sue them. It also gives the trademark holder an efficient process with a short turnaround time for a decision to be rendered costing less money than what would be required to recover the domain name in a foreign country.
So, you ask, what does the history of UDRP have to do with .CO? The answer is that when you register a .CO domain name you are agreeing to be subjected to the UDRP in the event an individual or entity claims that your domain registration infringes on or violates their rights. So please, be responsible with your choice of .CO domain names.
It’s hard to believe, but there are small minority of people who still seem to think they can simply register a domain name with someone else’s trademark and try to profit by selling it back to the brand owner — or by otherwise leveraging the goodwill of their brand. You can’t! And unlike the “old days” of the Internet, today’s laws are exceedingly clear on this point!
Well, you might ask, “what if I register a .CO domain name that violates someone’s trademark — but I didn’t even know they existed? Surely, I’ve done nothing wrong if I didn’t mean it, right?” Wrong. Like the old saying goes, “Ignorance of the law is no excuse.” So be careful. You may think you have a great domain name for your new business or blog — but you still may find out later that you have unwittingly registered a name that infringes on someone else’s trademark.
The bottom line is this, whether it was done intentionally — or simply due to ignorance of the law — you may very well lose a UDRP proceeding (and your domain investment) if your .CO domain name infringes on or violates someone else’s trademark.
So what should you do? The answer is simple! Do your homework!
Respect the rights of others — and protect your own time, energy and investment — by contacting a trademark lawyer and having them conduct a trademark search before you buy a .CO domain name. An attorney can help you to determine whether your registration of the proposed domain name would violate a third party’s rights, considering how you plan to use the domain name and your purpose for registration.
Thanks to Karen J. Bernstein for this great post!
Karen has been associated with two highly-regarded Park Avenue intellectual property and entertainment business law firms in Manhattan. As an IP associate, she benefitted from working closely with esteemed attorneys and gained experience in her areas of concentration. Karen’s clients include well-known celebrities, speakers, and small to medium sized businesses.
Bernstein. Karen “Still Squatting After All These Years? (Whether You Know It or Not!) By Karen J. Bernstein, Esq – Guest Blogger | The .CO Registry.” Weblog post. CoInternet.co. CoInternet.co, 8 Aug. 2011. <http://www.cointernet.co/blog/still-squatting-after-all-these-years-whether-you-know-it-or-not-karen-j-bernstein>.