Protecting Your Domain Name From Internet Thieves, Employees & Ex-Partners

April 14th, 2008

URL theft by a partner or co-owner: We receive calls every week from companies who essentially tell us that an ex-partner or company owner has taken control of their domain registrations and that the now-ex-partner refuses to release the stolen name to the company. Perhaps the name was registered initially in one partner’s name. In some cases, that business owner redirects the domain to another website, essentially putting the online business out of business. More often, the business owner demands some sort or money or other consideration in exchange for the domain name. Essentially, they use the URL as leverage to obtain something they couldn’t achieve in the context of the partnership. This is perhaps the most common example of domain name theft. Domain names stolen in this fashion account for about 25% of the calls and emails we receive in the domain theft area.

URLTheft by Employees: Unfortunately, corporate management is rarely involved in the registration process of their domain names. Registration of domains is often handled by the IT department, and even delegated to lower level web site employees. Because of the high turnover rate at that level, the employee with access to the domain registrant login information ends up leaving the company, taking that information with them. Again, if there is a dispute with the employee, it often turns into a domain name dispute after termination. Once the domain registrant information is stolen, it can be difficult to retrieve.

URL Theft by Vendors: Sometimes, a technology vendor or web site developer uses their own information to register your companies domain name, even going so far as to list their company as the registrant of your trademarks. If a billing dispute arises down the line, the web developer uses the URL as leverage to get paid. Even more common, the web vendor goes out of business and the company doesn’t realize that they have no way of obtaining control of the domain name or even renewing the domain name at the end of the registration period. If a domain name is stolen by the web developer or vendor, you could be in big trouble if the vendor’s company folds, the web developer moves away or you become the target of cyber-extortion.

The words “someone stole my domain name” are words said far too often in our business. Companies must take their intellectual property rights more seriously and protect their intangible assets like they do other tangible property. An ounce of prevention is really worth a pound of cure. Control your registrant login and you will control your domain name from theft.

Mr. Schaefer is a seasoned trial attorney practicing internet, domain and trademark law on a global basis. Mr. Schaefer has first chair trial experience in a wide variety of litigation matters, including class action litigation, internet and domain law, cybersquatting actions, intellectual property, commercial and fiduciary litigation, UDRP and IP licensing. He has represented some of the largest companies in the world in litigation, domain name, trademark and related matters. He is a frequent author and presenter on issues related to protecting business interests in a global internet economy.

To find out more about trademark protection, copyright law, cybersquatting and complex litigation, please visit Traverse Legal, PLC or visit our domain name protection blog or cybersquatting blog

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Domain Name Dispute Resolution: Choosing your Forum

April 14th, 2008

Some call it forum shopping. Others call it preparation. Given the choice, wouldn’t you choose the latter?

When involved in a domain name dispute, you have the opportunity to select the body that will arbitrate the dispute. Because of this, you have the ability to choose the forum in which you will resolve the dispute, just as you would choose the service provider for your mobile number.

However, which forum you finally choose should depend upon the specifics of your case.

The two most popular domain name dispute resolution providers are WIPO (World Intellectual Property Organization) and NAF (National Arbitration Forum). Although both UDRP providers, WIPO and NAF have different fee structures, decision turn-around times, and other nuances explained in their respective supplemental rules.

Regardless of the specifics of the different resolution providers, the number one consideration when deciding whether to choose WIPO, NAF, or any other, should be based upon a review of how Panels decided cases similar to yours. Both WIPO and NAF provide access to their decisions at:

WIPO http://arbiter.wipo.int/domains/cases/index.html

NAF http://www.arbforum.com/domains/decisions.asp

With the ever-increasing number of decisions available, it is important to be able to form an educated prediction as to how a particular service provider’s panel would resolve your case. When selecting your dispute resolution provider, looking at prior decisions to find a trend can help, but it would be even easier if you knew both the majority and minority views on particular issues that commonly arise in the UDRP so that your case could better address the specific issues that the panelists have raised in the past.

It is in researching and interpreting the majority and minority views where a law firm specializing in domain name disputes can help most. Ideally, you should choose a law firm with background knowledge of both trademarks and the UDRP, but the best choice would also carry case-tested experience in dealing with the different forums and the issues that arise in their deliberations.

In the end, it is not asking the law firm too much to do an initial review of your case, peruse decisions issued by both service provider’s on the particular issue, and ultimately provide a risk assessment of your case. You can contact us today to provide such a service, and if you so choose, assist you in filing a complaint, responding to a complaint, or simply navigating your way through the UDRP.

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