You just awoke to find you are victim to a domain hijacking. Your website is down, and has been replaced by ads for sexual performance enhancing products. Your domain is now owned by an individual in Thailand with a phony name and address.
Or, perhaps you operate a successful on line business in the U.S. and learn someone in Australia has copied your entire site, and launched an Australian version of the site as their own, using your trademark in the domain but with an .au ending? Your .com is now a statistic, one of thousands that are the subject of domain hijacking each year.
What if the offending domain is a deliberate misspelling of your domain or trademark, and the landing page and contains content advertising similar goods or services? Dozens of sites containing misspellings being monetized with Pay Per Click Ads (PPC’s) can add up to serious income for typosquatters. In the case of the misspelled domains, commonly referred to as typosquatting, Facebook recently obtained a default judgment in U.S. District Court in Los Angeles to recover hundreds of misspellings of “Facebook.”
These are real stories, from real clients. If this happens to you, can you get your domain back, and if so how?— Cheryl Hodgson
1. Get the facts. When the offending domain is not one you are actually using ask, “Does the URL of the third party domain take you to a live website, or to a parked landing page filled with ads? If so, does the landing page market or advertise related or competitive goods or services to those sold under your brand name?”
If there is no live website, and or the ads are not for competitive goods or services to yours, your only recourse is to buy the domain from the third party.
On the other hand, if there are competitive goods and services, or a parked page with PPC’s that are related to your own, then read on. There is legal authority stating that this is Initial Interest Confusion and illegal. Companies such as Sedo actually help infringers fill parked pages with ads for competitive goods and services so don’t assume you can not have them removed. Don’t assume you cannot have them removed. Facebook went to court to do so, but it was suing over hundreds of offending domains.
2. Locate the domain owner. Use the WHOIS data base maintained by ICANN. Most every registrar has a link to the database. WHOIS. The registrant’s address and email is listed to assist when your domain is hijacked. However, some registrations are shielded by privacy services, which means you cannot identify the true owner, only the privacy service. Real squatters often give phony names and addresses. While the information is supposed to be updated upon request to the Registrar, many such as GoDaddy refuse to follow the ICANN rules requiring cancellation of the domain if the current address and email is not provided within 30 days.
3. Write a letter. The starting place for any legal wrong is to document the situation in writing. Prepare and send a letter demanding return of the domain with proof of delivery. Also send the letter by email to the address shown in the WHOIS information, and send a certified copy to the Registrant address identified in the same information.
4. Register Your Trademark. Do you have a federal or state trademark registration? Remember: Domain Names are not Trademarks. A trademark registration makes recovery of an infringing domain much easier since the first element required to recover a domain is proof of trademark or trade name rights. The proof is automatic if you have a registration. If not, the burden of proof is much higher. Make sure you file correctly Read, 5 Reasons Your Trademark Will Be Rejected.
5. File a UDRP. What should you do if there is no response from the owner? The remedy to recover an infringing domain in case of a domain hijacking is to file a Uniform Domain Dispute Resolution Proceeding (“UDRP’). For .com endings, the filings are before the National Arbitration Forum or the World Intellectual Property Association in Geneva, Switzerland (WIPO). The proceedings are in writing, and the cost is a fraction of a real lawsuit. In some cases, you may still be better off paying off the offender and getting back the domain. However, remember that an offer to sell you an infringing domain containing a trademark is evidence of bad faith if the demand is too high and you have to file a UDRP!
Go forth and recapture.
By Cheryl Hodgson
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