Trademark Law

Even Fortune magazine struggles with the definition and elements of cybersquatting.  In a recent article titled "Help, a competitor bought my Web domain!", Fortune writer Jennifer Lawinski, who supposedly quotes Christine Jones, general counsel for Web hosting company GoDaddy.com, gets it egregiously wrong by misinforming the readers:

1. Repeatedly stating that you must have a registered trademark to file and prevail under the UDRP.
2. Mysteriously referencing copyright law, which has nothing to do with cyber-squatting.
3. Stating that the registrant must have "the express purpose of competing with you" in order to prevail under the UDRP.
4. Stating that you automatically lose under the UDRP if you let your domain name registration expire, even if you have a registered trademark.
5. Mysteriously referencing patent law as somehow related to the UDRP

Here is the full article with erroneous information in red:

(FORTUNE Small Business) -- Dear FSB: Both the name and URL of my company's website were registered with a domain name registration company. After more than five years they have sold the URL for my company's name to another person who now runs it in competition to mine. Do I have copyright to this name and URL?

- Garry Whitfield, San Francisco, Calif.

Dear Garry: Unless you have a trademark on the business name, there's little you can do, according to Christine Jones, general counsel for Web hosting company GoDaddy.com, in Scottsdale, Ariz.

"The first thing you have to distinguish is between copyright and trademark," Jones said. In brief, copyright protects the creators of "original works of authorship" such as literary and musical works. A trademark, on the other hand, is a word, name, symbol or device used to distinguish a particular good from others in the market.

"The question to ask is if you need a trademark to the name and URL," Jones said.

If your business name is a registered trademark, you can file a domain name dispute under the Uniform Domain Name Dispute Policy which is governed by the Internet Corporation for Assigned Names and Numbers (ICANN).

Patent vs. copyright: Protecting your creations

A successful challenge must establish that you had a registered trademark for the name, that you didn't license that trademark to the current user, and that the user acted in bad faith for the express purpose of competing with you.

"In that case, you'd probably win the name back," Jones said.

If your website's name has not been trademarked, however, and you let the domain name expire or if the name is considered a generic term, you are probably out of luck.

"The domain name registrar has no obligation to continue to hold it for you," Jones said.

You also don't have any real redress with the person who purchased it after you let it expire, which would be true even if you did have the name trademarked, she said.

"The lesson to learn is to ensure that you have your name set to auto-renew. Have a valid credit card number on file with your registrar and be sure to read all e-mail from the registrar," Jones said.

How do you protect your Web domain? Tell us about it.

Could Christine Jones, general counsel for GoDaddy really be this misinformed about the UDRP?