In the very early stages of starting your new business you should be thinking about establishing your online presence. Online business, no matter your field, is becoming more and more essential as the world grows ever more digitized. It is not uncommon for brand new startups to register a domain for their company in the very early stages of creating their business plan, if for no other reason than to secure it as quickly as possible. However, with the total number of websites on the internet increasing exponentially, you may find that the domain name you wish to register, no matter how unique or relevant to your specific business, already belongs to someone else. On the other hand, you may have already been using your domain name for a long time and hold a trademark on it, but discovered that someone else has registered a domain that is similar enough to yours to cause confusion. These scenarios, and a myriad more like them, are very common. Depending on what legal rights you can claim for your domain, they can also be relatively easy to solve. Here are a few strategies you can implement when you find someone else has registered for a domain with your business name.
Buy The Domain
Whether you have a trademark on the domain the other party is holding or not, often times the easiest, quickest, and cleanest solution is to simply buy the domain you wish to use. There are no standard prices for privately owned domain names, do the owner can charge you pretty much whatever they want. This will usually result in a negotiation rather than a straight-forward purchase. If the owner is cybersquatting (i.e. they have purchased the domain and several others in bad faith just so that they can sell them to people at a rate higher than they originally paid) and you are a small startup without any brand recognition, you may be able to simply buy the domain for a fairly low price. However, if the domain belongs to another company, or someone who legitimately wishes to use it, and/or your company is already reasonably established, then the fee the domain owner wishes you to pay may be quite high. In either case, you should consider this option first because it will be quick and avoid any legal confrontation.
If you are attempting to register for the domain through a registrar like 101domain, then you have access to a broker service. If you use this service then 101domain will go through the (difficult and time consuming) steps of contacting the owner of the domain and mediating negotiations between you and them.
Alternative Extension
If buying the domain from the owner is not possible, you could use an alternative extension. In other words, if you can’t register or buy a domain like mycompany.com, you could see if you can register mycompany.net, or mycompany.biz, etc. You could also alter the front end of your domain, such as changing mycompany.com to thecompany.com. You should utilize this approach cautiously however. If someone holds a valid trademark on the domain name you are altering, they would have grounds to take you to court over use of the name. As this article goes on it will discuss how the legal quagmire this approach creates can be dangerous. This option is only something that you should consider if you are positive your domain name is not confusingly similar and that you have legal claim to fair use, should it come to that.
Wait For The Domain To Expire
Because cybersquatters typically register a large number of domain names at one time, if you feel that the domain you wish to use is simply being squatted upon and not being used legitimately, you could try to simply wait for the domain owner’s registration to expire and then register for it yourself. As with the above option, however, there are a few problems with this approach. Firstly, you would have to be sure that the domain owner is absolutely a cybersquatter and has no intention of using or renewing their domain. It also takes a potentially significant amount of time.
Because of these difficulties and grey areas, buying the domain from its owner should always be your first course of action.
Of course, these options assume that you do not have a trademark on the domain you wish to use; in other words, you are just starting your business and are looking to register your domain for the first time. On some occasions, however, you may find that even after you establish your brand and trademark your company name, someone has still managed to sneakily register for a domain that you now wish to include in your domain portfolio (i.e. you own mycompany.com but you now wish to expand and register for mycompanyinfo.com) or that they are attempting to siphon business away from your domain by using one that is confusingly similar (i.e. you own mycompany.com but you find someone else using mycmopany.com). In these instances, if you hold a valid trademark for your domain, then there are a few steps you can take that are more concrete and definitive than simply buying the domain from its owner.
Cease and Desist
In some cases, such as with cybersquatters who have no legal claims whatsoever to any domain similar to yours, a simple cease and desist can be enough to stop them from using fraudulent domains. The benefit of this option is that it is quick and free. A cease and desist letter can be sent very easily and requires no legal backup; essentially, it just says that you, the owner of your trademark, know that the owner of the fraudulent domain is engaging in predatory/illegal activity and that if they do not stop that action you intend to take legal recourse. Sometimes the threat of court action is enough to scare away intruders from your trademark. If the fraudulent owner holds fast and does not relinquish the domain, luckily for you, there are a number of legal protections set in place for trademark owners.
Uniform Domain-Name Dispute-Resolution Policy (UDRP)
The Uniform Domain-Name Dispute Resolution Policy, or UDRP, is a policy set in place by ICANN (the Internet Corporation for Assigned names and Numbers) to provide a resolution for disputes over the predatory registration of a domain name. The policy applies to all generic top level domains (e.g. .COM, .NET, .ORG, etc) and some country code top level domains. The policy was created to streamline the process of resolving legal disputes over domain name arbitration. It considers multiple specific criteria to determine whether a domain name has been registered in bad faith. You can learn more about the specific criteria and how to file a UDRP here.
Uniform Rapid Suspension System (URS)
A similar system, the Uniform Rapid Suspension System (URS) was also introduced by ICANN. It was designed to be a more streamlined and efficient process. In short, it allows for even quicker arbitration of cases of domain name disputes that are so clearly fraudulent that they can be open and shut in a minimal amount of time. To read about the difference between UDRP and URS you can check out this article here.
Court
If all else fails, a plain old lawsuit is still an avenue you could pursue. This is typically considered the last line of defense as it’s the slowest, most expensive, and overall most excruciating of all of the options listed in this article. However, it still gives you and your lawyer a chance to say your piece in person. While certainly a court battle is no fun and not easy, it is a viable option that you, as a trademark owner, have to defend yourself should the situation demand it.
