You might find that someone else has snapped up the domain name of your dreams. Here are your options, including ICANN's dispute resolution procedure and filing a trademark or cybersquatting lawsuit.
So you have a great idea for a domain name. The name will make you millions and be the beacon by which an unprecedented amount of internet commerce flows your way. You're excited.
You go to a domain name registrar to perform a domain name search and, you guessed it, the name you want is already taken. What now? Don't worry, you have choices. Let's explore your options.
1. Use .net, .org, .biz, or .info
If you're like most businesses, you want .com at the end of your domain name. But as you might have surmised by now, many .com names are unavailable. However, the same choices could be available with another suffix. Some domain name registrars will even prompt you with the .net, .biz, .info, or .org choices after they tell you that your .com choice is unavailable.
However, be careful about using a different suffix with a name that's already a .com name. Choosing a different suffix could get you the domain name, but it could also get you in a legal battle with the owner of the .com name if your website confuses the .com owner's customers.
2. Change the Name Slightly
A domain name is reported as not available only if the exact name is already taken. For instance, if an availability search tells you that madprophet.com is already taken, you might find that "mad-prophet.com" or "madprophets.com" is available. If you're not wed to the exact form of your first proposed domain name, you can experiment with minor variations until you find an acceptable name that's available. But just like choosing a different domain suffix can cause issues, so can using a variation of a taken domain name.
3. Buy the Name
Domain names are bought, sold, and auctioned like any other property. If the domain name you want is being used on a successful, actively maintained commercial website, chances are slim the owner will sell it to you. However, if the name is reserved but isn't yet being used, you might be able to get your hands on it for a price you can afford.
You can buy a domain name in a variety of ways such as:
- looking in online classifieds
- contacting the owner directly and making an offer
- making a bid on an auction website (ebay.com, for example), or
- going through an online domain name broker (such as GoDaddy and Bluehost).
4. Assert Your Rights If You Already Own the Trademark
If you're already in business and want to use your existing business name as your domain name, then you might have the upper hand in a dispute with someone who's already using the name online.
Under trademark law, the first person to use a trademark in commerce for a set of products or services is considered the owner. So, if you used the name to market your products or services before the domain name registrant started using the same (or similar) name to market the same or a similar set of goods or services, you might be able to prevent that registrant from continuing to use the name.
If you're a trademark holder and you want to challenge the use of a domain name, you'll first need to decide on a strategy for going after the registrant. You currently have three choices:
Use the dispute resolution procedure offered by ICANN. ICANN, the international nonprofit organization now in charge of domain name registrations worldwide, recently implemented a process called the "Uniform Domain-Name Dispute-Resolution Policy" (UDRP). This administrative procedure works only for cybersquatting disputes—that is, when someone has registered your name in bad faith to profit from your trademark. Compared with filing a lawsuit, ICANN's dispute resolution procedure is potentially less expensive (usually about $1,5000 to $4,000 in fees) and quicker (normally resolved within 60 days).
File a trademark infringement lawsuit. If you take the domain name registrant to court and win, the court will order the domain name registrant to transfer the domain name to you. The court might also award you money damages as well. A lawsuit is always an option, whether or not you pursue ICANN's dispute resolution process.
File a cybersquatting lawsuit. If you take a cybersquatter to court and win, you could get not only the domain name you want but also win money damages from the cybersquatter. The Anticybersquatting Consumer Protection Act of 1999 (ACPA) allows a cybersquatting victim to file a federal lawsuit to regain a domain name or sue for financial compensation. Under the ACPA, registering, selling, or using a domain name with the intent to profit from someone else's good name is considered cybersquatting.
How to Find a Domain Name Registrant
To find the name and address of a domain name owner, you can use the Whois lookup service. Your search results will include a contact name, phone number, address, and email address for the domain name's owner.
While we've offered some suggestions here, your greatest resource will be your own imagination. For instance, perhaps a simple letter demonstrating your ownership over the trademark, with an offer for a small compensation or some other arrangement, is all that's needed to resolve the conflict. Or, you might reach an unconventional agreement with the holder of a desirable domain name, rather than meeting the stated purchase price.
And of course, in the end, you might just throw up your hands and decide to go back to the drawing board and make another list of names. That's fine too. If you do decide to go with a new name, make sure it's available for you to use. Be creative and the right solution will follow.
Consulting a Trademark Attorney
If you've tried unsuccessfully to reach an agreement with the domain name owner, consider reaching out to a trademark lawyer. An attorney can help you understand your and the registrant's rights in the domain name. They can also help you reach out to the domain name registrant with either a demand letter or an offer, depending on your situation.
If you're considering filing a lawsuit or using ICANN's dispute resolution process, it's a good idea to consult a lawyer who has experience with domain name disputes. They can advise you on which dispute resolution process (UDRP or a trademark or cybersquatting lawsuit) is the best choice for you. A lawyer can help you prepare your case and represent you in court.
