Some companies late to the party on the Web have found their dot-com names claimed by a savvy Web surfer who is demanding hundreds, if not thousands of dollars to give it back.
The good news is, in most cases, you can get it back without paying the cybersquatter for it.
In 1999, the Internet Corp. for Assigned Names and Numbers (ICANN) adopted a policy for resolving disputes over domain names. The policy is similar to that of trademark law, even if the name of the company or the person is not a registered trademark. In recent years, there have been highly publicized suits involving pop star Madonna, civil rights pioneer Rosa Parks and Reuters News Service.
Late last year, Northeast Ohio’s Pete Baur Pontiac won a dispute involving a Cleveland man who registered four domain names featuring Pete Baur’s name and tried to sell them to the dealership for a profit. Baur, through the Greater Cleveland Automobile Dealers’ Association, contacted an attorney. The cybersquatter didn’t fight the case, but Baur was still required to prove through the online dispute resolution process that he was entitled to the names.
“It’s no different than a lawsuit where both sides have a legitimate argument,” explains Robert Chudakoff, a partner with Ulmer & Berne LLP and a litigator in the firm’s intellectual property/e-commerce group. “One of the things you have to prove is bad faith registration.”
Here are four steps Chudakoff recommends you take to reclaim your company’s name on the Web.
Hire an attorney.
There are four certified organizations you can use to resolve the domain name dispute online, through the mail or via fax machine. Chudakoff recommends if you only want to go through the process once that you get a lawyer to get the ball rolling. In the Baur case, all it took was a letter from the law firm for the man to relinquish the names.
State your case.
It is paramount that you prove the domain name is either being held in bad faith or the squatter has no legitimate business interest in the name. However, if you’re challenging another company with the same name, it’s unlikely the case will be successful.
“If there was another legitimate Pete Baur or someone who had a legitimate commercial interest in that name, I probably would not have been able to do it this way,” Chudakoff says. “But that’s the key. This individual had nothing do with Pete Baur or auto dealers.”
Wait for a ruling.
After the complaint is filed, the dispute is usually resolved in less than 90 days, with costs ranging from $750 to $5,000.
“It isn’t a small amount, but compared to what it cost for us to sue in federal court and litigate and do discovery, it was cheap,” Chudakoff says.
Keep in mind that even if the squatter doesn’t dispute the company’s right to the domain name, the company still must prove that it has a right to it.
Challenge, if necessary.
In some cases, the panel sides with the squatter if he or she can prove an interest in the name. Within 10 days, the company must file a lawsuit against the squatter and prove to the dispute panel that a lawsuit has been filed.
Once that is completed, the panel’s decision will not go into effect until the lawsuit is settled. How to reach: Ulmer & Berne LLP, (216) 621-8400. For a list of approved dispute resolution service providers, visit ICANN at www.icann.org/udrp/approved-providers.htm.
Morgan Lewis Jr. ([email protected]) is a reporter at SBN Magazine.
