Does the Advent of .Sex Mean My Domain Name Needs New
Protection?
or...
How Do New TLDs Impact Existing Domain Names?
Is your domain name going to be at risk when new Top Level Domains
are released? Do you really need to own your name in every top
level domain to protect it?
The answer is no for those who know their rights and how to
defend them. Although it may be in the best interest of registrars
to collect their annual fee from you in every new TLD that is
approved, that expense is unnecessary as a means to defend your
name. There are now federal laws and a sizable arbitration case
history that will defend you against attacks from cybersquatters,
competitors, and others that try to misuse one name in another
domain. The laws make it unnecessary for you to make multiple
registrations just to protect your original site. Yourwebsite.com
will be safe from copycats like Yourwebsite.sex if you follow
basic precautions.
Well-informed web sites understand cybersquatting guidelines
and can use simple mechanisms to defend their rights. It is easy
to assess the strength of their claims to their site name using
the established guidelines. These guidelines, developed by the
World Intellectual Property Organization (WIPO), apply three
basic tests to settle cybersquatting disputes. WIPO looks for
bad faith, confusingly similar trademarks, and legitimate use
of the domain name to determine rightful ownership. The WIPO
site, http://wipo2.wipo.int/process1/report/finalreport.html#IV,
provides detailed explanations of these guidelines. Essentially,
any legitimate online business that registered their name in good
faith (i.e. not to steal some one else's branding,) and has a
trademark in their domain name should feel secure from
cybersquatting threats.
Registering your trademark has many advantages and can make
defense of your rights easier, but registration is not required
to gain protection under trademark law. Your brand name can
become a trademark simply by adoption and use, if it meets
trademark criteria. For guidance and information on the
requirements for trademark protection and tips on the
registration process, visit redPatent at
http://www.redpatent.com/nameyourproduct.htm. If you are ready
to register your trademark, you can do it on-line at the
US Patent and Trademark Office,
http://www.uspto.gov/teas/index.html.
The US Patent and Trademark Office (USPTO) has reported a
sharp rise in domain-name related trademark applications,
but it hasn't moved away from its stringent requirements for
trademark approval. The result of the trademark law is that
no one trying to steal your domain name or your reputation
is likely to succeed in getting trademark approval. Here's
how it works:
The USPTO does not consider the Internet address elements
of a name (such as the http://www at the beginning or .com
at the end) to be significant parts of a trademark. In other
words, once you have a trademark on the name "Yourwebsite",
you don't need a separate one for "Yourwebsite.com" or for
"Yourwebsite.sex", or any other web address. The USPTO won't
require trademark holders to get new protection, nor will it
grant trademark protection to someone attempting to infringe
upon your mark combined with a new TLD.
There is still an advantage to owning your name in multiple
domains - if you own a domain name it's not possible for
others to infringe on your rights by misusing it themselves.
But you need to weigh that advantage versus the costs, and
the fact that owning each domain isn't actually required
for legally protecting your name.
Just knowing these rules, however, won't protect you from
infringers or cybersquatters, and still won't stop rival
companies from accusing innocent domain name holders of
infringement. Disputes are still possible, but there is an
alternative to a lengthy (and costly) legal battle. Online
dispute resolution is available, and it has a proven record
of resolving complaints quickly (within 45 days) and is
relatively inexpensive (about $1,000). Those with disputes
can start the process online at the WIPO Arbitration and
Mediation Center http://arbiter.wipo.int/domains/index.html.
In addition, those with domain disputes have the added protection
afforded by the Anti-cybersquatting Act in the U.S., which
gives additional recourse to infringed parties. For a summary
of domain name issues, suggestions and frequently asked
questions for webmasters, visit redPatent
(http://www.redpatent.com/domainNames.htm).
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Laura Moran is a cofounder of redPatent Inc,
http://www.redpatent.com, a company that provides software and
tools to help web sites protect their intellectual property.
Laura can be reached at mailto:laura.moran@redpatent.com
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