This article by Stuart L. Adams, Jr. appeared in the
Louisville Computer News
THE CASE OF THE HIJACKED DOMAIN NAME
WHATS IN A NAME
Choosing a name by which your company, product, service or Web site will be known, can be a critical stage of your business. The name may determine where you will appear in an alphabetical phone of directory listing or list of web sites in an Internet search engine. It may influence whether customers can remember your name. Many products and services have been successful, initially, simply because the name grabbed the attention of potential customers. Name selection is a part of overall marketing strategy.
A trade name is used by a company to describe itself in commerce. A trademark is registered with a state or the United States Patent & Trademark Office, to protect the name of a product such as "Coca-Cola ®." A service mark is a name similarly registered to identify the service provided.
Research and thought should go into the selection of the name for your business, product or service. Money will certainly go into the promotion of it and care should be taken to preserve your right to the exclusive use of the name. The longer your selected name is in commerce, if it is unprotected or unprotectable, as described below, the greater will be your loss. Imagine, for instance, that you spend the time and money to gain some "good will" only to find that you must discontinue use because someone else has "registered" the name in some fashion.
PICKING YOUR NAME
Business owners must not only consider the lasting impression and impact the business product or service name will have, but also must consider how easy it will be to protect the name from use by a competitor. Not only first time entrepreneurs but even big corporations have made and probably will continue to make the mistake of picking a name which is either generic or in the public domain. Worse yet, they may use one that is already taken.
A trademark or service mark is usually a word, name, phrase, design, logo or a combination of these which is used in commerce to distinguish one product, service or company from another. Trademarks are typically used to distinguish manufactured good or products while service marks are used to distinguish services offered by the business. They may be obtained at the state level or the Federal level, but the protection and coverage at the Federal level is vastly superior to the alternative.
DOING YOUR RESEARCH
Many people think that when they register the name of their new company with their local secretary of state that they have protected their trade name. While this does afford some protection at the state level, even in this computer age, most such offices do not communicate with each other or even with other agencies within their own state. There is no common database for names other than Federal registration. Even that will not give you a superior right to a prior state registration.
Luckily, there are companies reachable on-line which specialize in researching not only Federal registrations but also all states and even do a literature and Internet search to look for uses of totally unregistered names. Some such names, if used in commerce, may have sufficient common law rights already established, so as to knock out your later registered name.
As far as Web sites or domain names go, Network Solutions, Inc. has assumed authority for registration of second-level Internet domain names in the top level, such as those ending in .com, .edu, .org, and .net. At their Web site, http://www.internic.net/, you can use their search engines to search their database of registered domain names to see if the one you want is already registered. Chances are it is already taken, but you can play without charge. If you find a free one, then you can register it on-line. Thats the good news.
THE BAD NEWS: PREEMPTION AND PIRATES
Network Solutions InterNIC Registration Services has posted its "domain name dispute policy" at the Web site listed above. This is used, for instance, when one company has registered a domain name and another company says it previously had registered the same name as a trademark or service mark. The bottom line is that they will not act as an arbiter nor provide dispute resolution services for conflicts arising out of domain name registration. Although their current policy says they may check the priority of registration dates, what they may do is simply yank the domain name until they have proof, such as a court order, indicating who may use the name. Enter the pirates.
Weve all probably heard stories of companies, primarily somewhere far away, grabbing all the registration possibilities for internationally known companies or their products. This is certainly true. InterNIC registers on a first come first served basis. Folks some would call "pirates" are known in other circles simply as entrepreneurs who knew they could spend a little money to register domain names which would naturally be plugged into search engines to find well known companies or products. Simply by going through the Wall Street Journal or the Fortune 500 you could put your ".com" after someones trademarked name and possibly beat them to the punch in domain registration at InterNIC. This, of course, allowed the well known company, the opportunity to pay the "pirates" a large amount for the privilege of buying back what they thought was their own registered name. The problem was that trademark law in the United States did not necessarily prevent these "entrepreneurs" abroad from using the same name with a ".com" attached, as their own. One of a huge number of such instances is that of the individual who registered YankeeStadium.com as his own, as well as several other well known names.
Just as some people obviously feel that copyright laws should not apply in cyberspace, although they do, some feel virtual piracy is the best game on the planet. After all, you can hunt your prey without being seen and you can strike from a remote hiding place. Recent suits have been filed by Volksvagen of America against a company for registration and offer to sell the names "vw-bug.com," "vw-beetle.com" and others. Other examples include an action by Mattel, the registered owner of Scrabble® against Hasbro, for the laters use of the introductory page: http://www.scrabble.com/" which allegedly offered information competitive to the owner of the trademark, and BellSouth Corporations action against a company for registering "realpages.com in conflict with the plaintiffs registered mark The Real Pages®.
There is no end to the possible pitfalls until a realistic international reformation of trademark, service mark and domain name registration occurs. That may not happen in our lifetime. Model legislation is circulating in many arenas but the problem, like a plane trying to land in Chicago, is that the drafts just seem to keep circulating and not landing. Even if they do, there is little to thwart international copyright and trademark piracy. Many U.S. companies are finding that even their properly registered company names and trademarks are being confused with equally innocent foreign companies posting Web sites with similar names. The number of U.S. companies who would go to the trouble and expense to seek international protection, such as it is, is relatively small. As a result, few even looked for such names in international commerce when setting up their own local company. Now, however, everyone can be international in the blink of an eye. Traffic just got much heavier as we start to compete globally, and collisions are increasing.
The bottom line still is, do your research and get all the protection you can. Your name establishes your customer base and your reputation. "Brand loyalty" is valuable. You will probably spend a lot of time thinking up a catchy name for your company or product, so why not research it as thoroughly as you would another serious investment opportunity. Or you could just roll the dice and see if the pirates pick up the gold.