Trademark Law

In the previous post, we discussed the increase in domain theft and stolen domain names.  Companies losing control of their domains face serious consequences, especially those who have an e-commerce component to their site.  Stolen domain names are becoming more frequent.  While the best approach is to prevent domain theft, many clients contact a lawyer only after the domain dispute has reached crisis level.

Recovering a stolen domain name typically involves several steps.  The first is to establish either contract or trademark rights in the domain.  If the company can establish that the domain name is protected by their trademark, a good domain name lawyer can leverage that trademark against any other third-party registrant.  Only the trademark holder is allowed to register a protected domain name. 

If the third party controlling domain registration is, for instance, the web developer or web host, there may also be contract rights which control registrant status.  Some web developers and web hosts put language in their contracts with customers allowing them to register the companies trademarks in the web developer?s/host?s company name.  Our domain name lawyers strongly recommend that every company should control their trademark protected domains.  Never do business with a web developer or host that even suggests registration of the domain name in their own name.  A company must control the registrant login and information at the registrar level.  This means that the company itself must be listed as the registrant and the primary email contact must be a high level company employee.  The web host or web developer can, in some instances, legitimately be listed as the administrative contact. 

If a third party has contract rights as the registrant, the UDRP may not be a viable option for obtaining the domain.  However, liability may still exist under the ACPA and an appropriately worded threat letter demanding transfer of the domain is typically the approach used by lawyers in this situation.

Beyond a domain name threat letter threatening transfer under the UDRP or a liability under the ACPA, a domain name attorney may also recommend a federal or state court action seeking a court order that the domain be returned.  This is obviously a more costly remedy, but in circumstances where voluntary transfer does not occur remains the last line of defense. 

In some circumstances, a hacker breaks into the email account for the administrative contact or listed registrant of the domain name.  By taking control of the email account, a hacker can take control of the domain registration, change the DNS settings or even transfer the domain to another registrar.  This typically involves the most serious consequences with the most limited remedies.  Domain name and email hackers are often difficult to identify and even more difficult to locate.  In these instances, an In Rem proceeding under the ACPA in the jurisdiction where the registrar or registry (typically they?re assigned) are located can also result in a transfer order in your favor.