I came across an article on CNN’s Business site this morning that struck my interest and had actually been a topic of conversation with a client a few months back. What would you do if you found out that your business domain name and the url to your business website had been sold to another company (worse, a competitor) who was now legally using it? I know I’d be irritated as heck trying to figure out what my next step was going to be.

The article is sparked by a man who writes to ask what recourse, if any, his company has toward the registration company who sold the domain name and URL to his company’s website. According to Christine Johnson who is the general counsel for GoDaddy.com, unless your company has a trademark on the domain name, there’s little that can be done. She further states that it is important to first distinguish the difference between copyright and trademark. A copyright protects the originator or author of a particular piece of work whereas a registered trademark is a word, symbol or device used to distinguish a specific product or good from others in the market. A servicemark can be used to protect a name or logo associated with a service offered by a company.
According to the article, if the business name is a registered trademark then a dispute can be filed under the Uniform Domain Name Dispute Policy which is governed by the Internet Corporation for Assigned Names and Numbers (ICANN). If the business name has been trademarked and registered and proof can be shown that the company who acquired the name (your competitor) acted in bad faith by achieving the name to compete with you directly, then you may have luck getting the name back. However, if the domain name has not been trademarked and/or the business has let the domain expire, then you are more likely “out of luck”. Once the name has expired, it’s anyone’s game as to who can pick up the name to use for their own business. This is not to say that you shouldn’t try to fight the company who bought the name, because if you are willing to put in the leg-work it might just pay off in your benefit, but it won’t be easy. There will be a lot of work to prove that you have had the business in effect and that the domain name uniquely identifies you and your company, prior to the competitor taking ownership of the name.

Obviously, the key is to remain aware of your domain expiration dates and do not let them expire if the business name and website is still active. Depending on the registration company, there may be allowances or a grace period between the actual expiration date of a domain name and the release date of a “dead” domain name. It is best to make yourself aware of your registration company’s guidelines and policies regarding domain renewals.

The costs associated with a Registered Trademark and a Copyright can be found at the United States Patent and Trademark Office and their 2008 Fee Schedule has been added.

REFERENCE: Lawinski, Jennifer; A Trademark can help corporate identity; Fortune Small Business; Feb. 12, 2008, retrieved from website at: http://money.cnn.com/2008/02/11/smbusiness/copyright_URL.fsb/index.htm?postversion=2008021211

United States Patent and Trademark office