Within the internet domain world, it’s not uncommon to “squat” on a domain name. In other words, a domain like “hotcars.com” is registered by person X who has no intent on setting up a auto site. Instead, this potentially desirable domain is registered in hopes that some deep-pockets company will want the domain name enough to buy it from the registrant.
Indeed, a coworker of mine sold a domain name for $40,000 about six years ago.
So, can I do this with generic words (& combinations)? Say I’m anticipating that Chrysler will introduce its newest SUV, the Chrysler Behemouth. Can I go out and trademark “Behemouth” today with the idea that they might buy the rights from me? Could I have trademarked “Fair and Balanced” 5 years ago and be suing Fox News today?
Even if you manage to squat a large number of possible domains, they’ll probably just change the name they’re using. There’s an urban myth about some guy buying up every possible www.21stcenturyfox.com derivative…and they changed their name to ‘fox’.
Registering hotcars.com in the hope that someone will want the name and pay big bucks for it could perhaps be better termed “speculation” than squatting… the latter term being reserved for the cases where people buy domains related to products/ services/ companies/ people that they don’t own / aren’t and then waiting for the “legitimate owners” to pay for them. In these cases people have been forced to give up the domains… the recent example of jrrtolkein.com is a case in point. Of course, if there is a HotCars company then it might be squatting…
With trademarks, as Wallon quoted, you need to specify the object being protected, so you’ll only be able to hold Chrysler to ransom over the Behemoth if you register (and use it commercially) for something close enough to an SUV… now IANAL but… it would seem that it you were selling the Belrix Behemoth truck you’d probably have a case for a conflict when Chrysler come to make their SUV… but if your commercial budget only stretched to marketing (and registering) the trademark for the Belrix Behemoth lollipop then you’ll be out of luck with Chrysler.
And if you do have a Behemoth truck then they probably market the Leviathan SUV instead.
May I ask how is someone supposed to register a domain name? Say you want to own a domian so that you have your own email address or for whatever purpose suits your fancy. Is there any standard convention as to what you may or may not register, or in which domain; .com .net .org .cc .au .jp .whatever you should register. I have my domain name which I like and which suits my purposes and I am known to all my friends and travelling companions as mydomainname.com and could someone then come along and say hey that’s similar to my business name I want it. Because I don’t use the domain commercially can I lose the said domain name?
Walloon has accurately answered the question from the US perspective. However, other countries may not have the requirement to show bona fide use or allege a statement of use, so it is possible and some people do. The path is paved with pitfalls though and I wouldn’t recommend it.
TLDs (top level domains) such as .com, .org, and .net supposedly have restrictiions. That is, unless you are a school or an institute of learning, you can’t register .edu. .org are supposedly for non-profit organisations and .net for companies and organisations dealing with Internet/Web infrastructure, but these don’t seem to be enforced anymore. AFAIK anybody can register a .com, .biz, .info, or .ws (website) domain name. Others, such as .uk or .jp are country-specific TLDs (ccTLDs) and are handled by the country’s government.
You can go to any number of domain name registrars such as Network Solutions or register.com and check whether the domain you want is available. If so, all you need is to pay to register it under your name. Your ISP may even do all the paperwork for you for a small fee.
Urban Ranger’s comments are a good answer to your first question but the question if somebody can take it away remains. If you’ve got a domain and somebody else wants it, they can (1) wait until you abandon it and grab it (2) pay you a bunch of money to give it up, or (3) challenge you with the national registrar organization (used to be ICAAN but that’s changed and I’m too lazy to look it up).
In general, the national org has changed ownership if the name is a trademark of the challenger. In the early days, a lot of people registered other companys’ names in the hopes of a payout. These owners of “Pepsi” and “cocacola”, etc. usually had they names taken away and given to the valid owner of the trademark.
I do know one I disagreed with. The owner of “Gateway.com” who had a website & business up and running years before “Gateway 2000” computers did had his name taken away. The word “gateway” is a perfectly good english word and didn’t, IMO, tramp on Gateway 2000’s trademark, nor was it intended to (according to the smaller “Gateway” owner). Gateway 2000 used to use “GW2K.com” and “Gateway2000.com” before the ICAAN handed this other guy’s domain over.
Controlled by who and how? When you go to register a domain all anyone is interested in is do you have the money to pay for it.
Ok I do understand country domains .jp .ca .it etc, but, who is supposed to say yes you can have this name and no you can’t have that name. If the name is available and you pay the prescribed fee and register the domain then you are the owner of that domain. I have owned my .com for 6 years now and I was never told you can’t have that name or .com or anything else. The web pages are nothing flash or fancy in fact it’s pretty damn bad but I like the fact that my email is under my control.
So Let’s say I decide I want to start attracting visitors to the site and start advertising and such with the main objective of increasing traffic and selling the domain. Now once you have significantly increased your traffic flow, as anyone knows increased the number of visitors to a site and it becomes valuable. Visitors equals advertising dollars so once you have a site that can attrack people it has potential.
Say your site has a catchy name not one that is common but interesting enough to say draw attention let’s call it gawnboatn.com and someone says hey I like that I want it. What’s to keep someone from the marine industry coming along and saying thankyou I’ll have that now. As in the Gateway example given by Belrix. Obvious squatting attempts I agree but where a name is questionable what would happen? Oh you don’t live in the US you can’t own a dot com domain, why not? Oh your not a commercial entity you can’t have that name. Besides there are literally hundreds of places where you can go to register a domain and they don’t really care who you are or where your from. But once done and setup who’s to stop anyone from challenging my ownership of a name.
I guess the main question I have is what is to stop someone coming along and saying I like it and I want it here’s a summons.
Under the Uniform Domain-Name Dispute-Resolution Policy administered by the Internet Corporation for Assigned Names and Numbers (ICANN), the party trying to get your domain name has to show:
That your domain name is identical to or confusingly similar to a mark in which they have rights,
That you have no rights or legitimate interest in the domain name, and
That you registered and used the domain name in bad faith.
Under your scenario, in which you registered the name for your own personal use and and you’re using it in good faith, you shouldn’t have a problem, theoretically.
Under the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. §1125(d), they would have to show:
A. 1. That your domain name is identical or confusingly similar
2. to a distinctive mark
3. and that it was registered, trafficked, or used with a bad faith intent to profit from the mark.
B. Alternatively, if the mark is a “famous” mark (which has to be proven), they can try to prove that your domain name is dilutive of the mark.
Anyway, the bottom line is that in either case, the person wanting to take away your domain name has to have a pretty good case. Now unless you’ve done something foolish and used a “famous” mark – Coca-Cola, Kodak, I.B.M., etc. – then you don’t have many worries.
In each case (U.D.R.P. and A.C.P.A.), there are a number of factors that are taken into consideration when determining bad faith. If you’re really using the domain in the way you say you are, then there shouldn’t be a lot of problem.
Disclaimer: I am a lawyer, but I am not your lawyer. This information is not legal advice. If you are really considering taking any action related to this issue, you must consult a competent lawyer licensed to practice law in your jurisdiction.
From the Anti-Cybersquatting Consumer Protection Act. there is this little gem which states.
So I’m working nicely at attracting visitors to my bobsboatn.com(not a real address, I don’t think!)and doing nicely anyway along comes someone who see the potential of what I’m doing. This person owns a company or something where he could make an association to the name. Me, being a ‘foreign entity’ has virtually no power to protect what I am working on.
I mean even if I’m only using the domain for email or whatever someone can just abitrarily take away my domain because they are a commercial entity within the US and they can come up with a relationship between my domain name and their business name or trademark and I’m only a “foreign entity”.
I would think there must be some provision to protect the domain name owner as well. Or is it just a case of if you build it they can take it?
This is only a hypothetical situation, I am curious though as to whether or not there are ways for me to protect what I see as mine. From what I have seen it would appear that if someone made the case this is my business name and this is my trademark and I now want to enforce it, with me being a foreign entity, bang guilty as charged your honor.
I do own a site and wish to keep using it to do with what I want, I’m not harassing, harming, cheating, or threatening anyone or doing anything illegal the site is harmless. I wish to keep the domain because in my opinion it identifies me email address wise at least (The web page is pretty much just a scrapbook but it’s me.) I don’t have the money to legally challenge someone who can just up and takes my domain away from me and it seems this is a possibility.
This is why we have trademark and servicemark registrations. And why we have international agreements recognizing the registered marks of other countries. And why it is your obligation, before you register your domain, especially if it is a commercial one (like bobsboats.com) to investigate whether it potentially infringes on an existing mark.
There is nothing new here. Before the Web existed, the same issues applied to business names, brand names, trademarks, and service marks. Anyone proposing to use one of the above is obligated to research whether such a name is already in use. If you don’t, you liable to face legal action for infringement. Why would the Web be any different?
IANYL, and all other disclaimers to go along with it.
I would like to add that the domain name registrars are there only to take requests and see if the name you want registered is already taken. If it’s taken, they’ll tell you to choose another one. If it’s not taken, it’s yours.
Others, have pointed out the difference between squatting and speculating, and trademark dilution and infringement (for intents and purposes of this post, they are the same thing). Using generic words is purely speculation (and for the most part, not inherently “trademark-able”), unless someone has invested a ton of time and money in making a generic word into their trademark, e.g. Apple. Squatting can be like speculation in that the squatter decides that he wants to sell his name, and the TM holder pays him rather than sues him. This is a gamble that I wouldn’t suggest taking.
In rem jurisdiction has always existed for any kind of property. And there are restrictions on it. Principally, the plaintiff has to show that it made a good faith effort to obtain jurisdiction over you. Now, if you happen to be a foreign owner, then they can get in rem jurisdiction over your property. It’s the same with land. If you own land in Virginia, then a Virginia court will get jurisdiction over it. The same is true of domain names – .com, .org., and .net domain names are considered to be located where the registrar or the register is located (usually in Virginia). If you’re outside the U.S. and you want to avoid such a possibility, you’re better off using a domain name that’s considered to be located in your jurisdiction.
No, he has to show that he has trademark or trademark-like rights in the name and he has to show that you don’t have any rights in the name.
Well, if you can’t afford to defend yourself in an overseas court, as I said, you’re better off choosing a domain name that is “located” in your own jurisdiction.
No, not arbitrarily.
This is not the standard. See above.
and I’m only a “foreign entity”.
The protections are built into the standards set by the statute. The other party has to prove bad faith on your part.
No, it’s a case of if you acquire property in a foreign country, you have to be prepared to defend your rights in court there.
Generic terms are not eligible for trademark protection. I don’t know what you mean by “Using generic words is purely speculation,” but it doesn’t sound right to me.
“Apple” is not a generic term in the case of Apple Computers or Apple Records. It is a fanciful or arbitrary term. “Apple” is generic only with respect to apples.
VISA recently sued a small website, evisa.com, which offered international travel-related services. Visa claimed the site diluted their trademark on the word “visa” despite the fact that “visa” was a word in the English language long before their trademark and evisa.com was using it in a way which exactly coincided with its dictionary definition, not in competition with Visa. Visa won this suit in October: Legal Cases | Electronic Frontier Foundation
However, thanks in part to support of the EFF, evisa.com has won their appeal and the word “visa” is once again a part of the English language: http://www.eff.org/Cases/Visa_v_JSL/20031222_memo_order.pdf
This judgement cites relatively new precedent that trademark infringment cases must demonstrate actual dilution of their mark rather than just the likelihood of dilution. This raises the bar even further for corporations who want to take domain names away from users who are not using them to compete directly with trademarks.