An Interview with Andrew Clemson, a renowned trade mark attorney on the rights businesses have around domain name dispute.
How did you become a trade mark attorney?
I am a science geek at heart, having studied Chemistry and Law at university and I had been considering combining the two by becoming a patent attorney.
Having found no suitable openings in the profession on finishing university, I opted to take up a position as a trade mark attorney, with a view to cross-qualifying at a later date. However, I found that I loved being a trade mark attorney and so decided to pursue this as my career.
What is cybersquatting?
In its most basic form, cybersquatting involves registering a domain name that incorporates words that relate to a brand or product belonging to someone else in the hope they will pay an inflated price for that domain.
However, other forms of cybersquatting are emerging such as the registration of social media accounts or email addresses using words relating to someone else’s product or brand, again in the hope of selling the account for an inflated price.
What rights do businesses and individuals have in relation to domain names?
Basically none. Domains are sold on a first come, first served basis. There is usually only recourse if a domain is registered in bad faith.
Without paying inflated prices to cybersquatters, how can businesses and individuals deal with the problem?
Generally, the best course of action is to lodge a formal domain dispute in order to demonstrate that the cybersquatter has registered the domain in bad faith.
Where the domain is based on an ordinary dictionary word and not also the name of an internationally-known business, it can be very difficult to demonstrate bad faith and advice from an experienced attorney can be vital. Holding a trade mark that incorporates the word in question can be vital evidence to support your case in a dispute.
Another way that you can demonstrate bad faith is in circumstances where the owner of the domain is attempting to ‘pass off’ your business, products or services.
It is possible to seek an injunction against the use of a domain name, however, there are jurisdictional issues with this as you cannot be sure that the injunction will be recognised by the home state of the cybersquatters.
How can businesses and individuals protect themselves against cybersquatting in the first place?
There are two key steps to take here. The first is to ensure that you have an effective portfolio of trade marks, covering all commercially important aspects of your branding and identity as a business. The second is to have a policy in place about which domains you consider commercially important to own and which you do not. You can then look to purchase important domains, without worrying about others. This needs to be kept under regular review as new top-level domains (TLDs) are made available. It is also a good idea if this policy also covers social media accounts.