=> Domain Name Registrations Generally

As a general rule, you can register any domain name that is not already registered (subject to trademark considerations discussed below). If your domain name is sufficiently distinctive, for example, jtdbizopps.com, bit before .com may also be a common law trademark (unless, of course, it’s registered and then it’s a registered trademark). If you DO have a distinctive domain name, then discussion in next section applies to you.

If you don’t have a distinctive domain name, however, and by this I mean a name that is “descriptive” or in general usage, for example, “home-business.com”, then this name will be neither a common law trademark nor a registrable trademark.

In this case, once you’ve lost your domain name registration, you are, not to put too fine a point on it, screwed. You don’t have much in way of recourse other than for “generic” legal avenues which may well be too expensive for you to pursue. These avenues are discussed below.

=> Domain Names and Trademarks

On other hand, if you have a distinctive domain name (i.e., one that is not in common usage), then that name is also likely to be a common law trademark (unless, as stated above, you’ve registered it, in which case it’s a registered trademark. And, if you do have a common law trademark, I would recommend that you register it. Registration can only strengthen your position.)

The law generally sides with pre-existing trademark owner over domain name holder. In addition, U.S. has enacted federal Anti-Cybersquatting Consumer Protection Act (the “Act”). Under Act, you can sue a cybersquatter to get back your domain name and sometimes damages to boot. So, what’s actionable under Act? Here’s an extract from Act itself:

“A person shall be liable in a civil action by owner of a mark, including a personal name which is protected as a mark ... if, without regard to goods or services of parties, that person ­

(i) has a bad faith intent to profit from that mark ...; and (ii) registers, traffics in, or uses a domain name that ­

(I) in case of a mark that is distinctive at time of registration of domain name, is identical or confusingly similar to that mark; (II) in case of a famous mark that is famous at time of registration of domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a [registered] trademark ...”

In terms of what constitutes “bad faith”, Act provides that court may consider factors (among others) such as:

“The person’s [i.e., alleged cybersquatter’s] intent to divert customers from mark owner’s online location to a site accessible under domain name that could harm goodwill represented by mark, either for commercial gain or with intent to disparage mark, by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of site; and

You know what cybersquatting is, right? It's when someone registers a domain name that heretofore has been someone else's trademark, with intent to hold name for ransom. Sometimes these people identify trademarks in market place and snap up domain name figuring that, sooner or later, owner of trademark is going to want to register domain name and may even be prepared to pay handsomely for privilege.

Other times, and this may even be worse, these trolls seize domain names that have lapsed due to their owners failing to renew them in time. When former owner tries to renew they soon learn to their horror that someone else has gazzumped them and are demanding several hundreds or thousands of dollars to return their property to them. As reprehensible as this practice is, there's nothing new about it and courts are chock-full of cases brought by outraged victims. ] But put *yourself* in shoes of poor person who has unwittingly allowed her domain name registration to lapse only to find that "Dave Web" is now rightful owner and wants $550 from you to give it back.

Now put yourself into these size elevens ... not only has Dave Web kidnapped your domain name, very one that used to point to site containing all of your hard work for past three years, domain name that is synonymous with your hard-earned reputation, not only that ... it now points somewhere else.

To a porn site.

We have now graduated from "mere" cybersquatting to criminal extortion. Not to mention criminal defamation.

This, believe it or not, is what happened to Jan Tallent-Dandridge just this week. Many of you will know Jan as publisher of Rim Digest (http://www.rimdigest.com). You may also be familiar with her other websites, http://www.marketingwarrioress.com and http://www.jtdbizopps.com, although if you tried to visit latter site today, you'd get a rather unpleasant surprise. This is domain name hijacked by Dave Web.

To give you background to this sorry tale, I asked Jan's permission to reprint her email to me

"... I had a domain name, jtdbizopps.com, for over two years but did not renew it. Instead I set up marketingwarrioress.com as a mirror and quit running ads, swaps, etc. for old name.

"When it came up for renewal, I was going to renew it just to keep it from being used for a year or so as I still had ads and link swaps out there I could not track down.

"Network solutions would not release name to me without my paying them $70 for 2 years and THEN transferring it somewhere else. I felt this was ridiculous since namebargain.com, etc. are only $10 or so a year.

"I did not renew in time and when I did try, about a week after cancellation date, it was "in purge", to quote NS, and I would have to wait 30 days or so for it to become available again.