Patent Law

Domain Name Law

By Erik J. Heels

White hat domainers are not black hat cybersquatters.

Domains Are Valuable? D'oh!

I've been on the Internet since 1984, watched the Internet evolve from text-based protocols to web-based protocols in the 1990s, and completely missed the generic domain name gold rush that has made many millionaire domainers.

Well, almost completely.

On 08/02/95, I registered one good generic domain name - Heels.com. And that was only because I have an unusual surname ("Heels"). Today, I'm busy turning Heels.com into the premier destination for designer women's shoes. It could be worse. My surname could be Bush.

And so I wondered. Is the domain name gold rush still happening? Am I as oblivious to the opportunities available today as I was 15 years ago? I don't know, but I do know that most of my contemporaries are kicking themselves for not seeing - 15 years ago - what is obvious today. Namely, that generic top-level domain names (and dot-com domain names in particular) are valuable Internet real estate. Real estate that can be sold (e.g. at a domain auction) or developed (as I'm doing with Heels.com).

Domain Names And The Law

Those who stick to generic domain names are the good guys, the white hats of the domainer industry. Those who do not, those who intentionally register another's company's brands as domain names (including typos thereof) are the bad guys, the black hats of the domainer industry. Domainers are not cybersquatters.

There are legal procedures designed to help victims of cybersquatting. The Uniform Dispute Resolution Policy (UDRP) allows a cybersquatting victim to gain (or regain) ownership of a cybersquatted domain. The Anticybersquatting Consumer Protection Act (ACPA) allows a cybersquatting victim to win damages in a court action against a cybersquatter. Both the UDRP and the ACPA require the trademark owner to prove "bad faith" on the part of the domain name registrant, which I believe is impossible, as a matter of law, if the domainer has registered only generic words.

Reverse cybersquatting (or reverse domain name hijacking) is when a trademark owner wrongly uses the UDRP or ACPA to acquire a domain name (or get damages from) a good faith domain registrant who can't afford to defend himself/herself in a UDRP proceeding or in an ACPA lawsuit. I believe that the 02/17/2000 borderpatrol.com UDRP decision is one example of a reverse cybersquatting case. I am sure that there are others.

It is also not uncommon for owners of generic domain names to think that they have more rights than the law provides. For example, say you run a blog about shoes at http://shoes.blogspot.com/. Then imagine that a shoe store launches at http://www.shoes.com/. Can the shoe store get the blogger to turn over control of the shoes.blogspot.com domain name? Can the shoe blogger get the shoe store to turn control of the shoes.com domain name? The answer to both is clearly no. The USPTO's Trademark Trial and Appeal Board (TTAB) usually gets this issue correct (see the lawyers.com decision) but not always. Which means, unfortunately, that there will always be room for those with money to fight their fights, regardless of the strength of their legal arguments.

It's a good thing that projects like the Chilling Effects Clearinghouse exist to keep overly aggressive litigants and lawyers and underly clued judges honest about various Internet-related topics, including the UDRP, ACPA, and trademark law.

My Domainer Experiment

On 08/24/07, I searched for unregistered blog-related domain names. I started with the General Service List (GSL), a list of about 2000 words that occur most frequently in English. There are other places I could have started, such as Scrabble word lists or Google Zeitgeist. Using Google Zeitgeist as a source of potential domain names would be a bad idea, because many of the most popular search terms are brands or other trademarked terms.

I wanted to stick to generic words, since generic words cannot be trademarked. Just like every grocery store is free to call itself "grocery store," every law-related blog is allowed to call itself "law blog" or the like.

I then added "blog.com" to all of the 3-letter, 4-letter, and 5-letter words on the GSL. I checked the rest of the list for interesting longer words (such as ChildhoodBlog.com). I used GoDaddy's bulk registration feature to check which domains were available. Not surprisingly, most of the good domain names were taken, but I registered the ones that were available. Most of these are like crumbs from the king's table, but there are some good ones on the list (see below).

I ended up registering 183 generic domain names. My intent was (and is) to sell the domain names to help pay for college for my kids. I also hired my 9-year-old daughter to blog about each domain, to teach her about writing, blogging, business, and the Internet.

The experiment has produced some interesting results, which I will blog about at a later date.

183 Generic Blog-Related Domain Names (For Sale)

Full post as published by Erik J. Heels on January 28, 2008 (boomark / email).