It Could Happen to You
| Category: Domain Names | Date: 2001-11-29 |
No, Im not talking about the warm and fuzzy movie that was on cable the other night with Nicholas Cage and Brigitte Fonda. Im talking about another type of experience altogether - one of the decidedly cold and nasty variety.
You know what cybersquatting is, right? Its when someone registers a domain name that heretofore has been someone elses trademark, with the intent to hold the name for ransom. Sometimes these people identify trademarks in the market place and snap up the domain name figuring that, sooner or later, the owner of the trademark is going to want to register the domain name and may even be prepared to pay handsomely for the privilege.
Other times, and this may even be worse, these trolls seize domain names that have lapsed due to their owners failing to renew them in time. When the former owner tries to renew they soon learn to their horror that someone else has gazzumped them and are demanding several hundreds or thousands of dollars to return their property to them. As reprehensible as this practice is, theres nothing new about it and the courts are chock-full of cases brought by the outraged victims.
But put *yourself* in the shoes of the poor person who has unwittingly allowed her domain name registration to lapse only to find that "Dave Web" is now the rightful owner and wants $550 from you to give it back.
Now put yourself into these size elevens ... not only has Dave Web kidnapped your domain name, the very one that used to point to the site containing all of your hard work for the past three years, the domain name that is synonymous with your hard-earned reputation, not only that ... it now points somewhere else.
To a porn site.
We have now graduated from "mere" cybersquatting to criminal extortion. Not to mention criminal defamation.
This, believe it or not, is what happened to Jan Tallent-Dandridge just this week. Many of you will know Jan as the publisher of Rim Digest (http://www.rimdigest.com). You may also be familiar with her other websites, http://www.marketingwarrioress.com and http://www.jtdbizopps.com, although if you tried to visit the latter site today, youd get a rather unpleasant surprise. This is the domain name hijacked by Dave Web.
To give you the background to this sorry tale, I asked Jans permission to reprint her email to me
"... I had a domain name, jtdbizopps.com, for over two years but did not renew it. Instead I set up marketingwarrioress.com as a mirror and quit running ads, swaps, etc. for the old name.
"When it came up for renewal, I was going to renew it just to keep it from being used for a year or so as I still had ads and link swaps out there I could not track down.
"Network solutions would not release the name to me without my paying them $70 for 2 years and THEN transferring it somewhere else. I felt this was ridiculous since namebargain.com, etc. are only $10 or so a year.
"I did not renew in time and when I did try, about a week after the cancellation date, it was "in purge", to quote NS, and I would have to wait 30 days or so for it to become available again.
"During this time an individual bought it somehow and offered it back to me for $550.00.
"Needless to say, I declined, number one, I did not want to USE the name anyway and number two, that was ransom!
"Well, tonight I found out that this company is parking a PORN site at that domain name and once again offered to sell it back to me for $550.00. I feel this is obvious blackmail but not only do I not have the money, I would not pay that ridiculous amount even if I could.
"My eBook had a "live" link that was accidentally left as jtdbizopps.com instead of marketingwarrioress.com though both my compiler and I thought they had all been changed.
"I was told off by a new subscriber who eagerly downloaded my eBook and then clicked the link that went straight to the porn site. I have spent the past 3 years working myself half to death, as I know YOU know about, and now my credibility and NAME are in danger due to this "person" using my ex-domain for this purpose.
"I know there is no way to get the name back without paying for it and/or stopping this "person" from using it for this or any other business, but I am hoping there is some damage control I can do to maybe make it worth his/her/ITS while to discontinue using a domain I can prove I had been using for over 2 years in this way if it hurts my business or name in any way.
"Sorry for rambling, but once I quit crying, screaming, throwing up, crying and screaming some more I am now down to incoherent stuttering.
Jan T-D
Marketing Warrioress and Publisher
(Rim Digest)
charter iCop member"
My primary motivation in writing this article is to help get the word out about what has happened to Jan so that, hopefully, those who do not know her will realize that she is, in fact, an innocent victim in all of this and not some nefarious person who gets her kicks from enticing people to visit a porn site when they thought they were visiting an internet marketing site.
That said, what lessons can we all learn from Jans experience? Well, there are a few ...
1. KNOW WHEN YOUR DOMAIN NAMES EXPIRE AND RENEW THEM BEFORE THEY LAPSE
First and foremost, know when your domain names expire and take steps to renew them before they lapse. As Jans experience illustrates only too well, there are vultures out there just waiting to swoop if you make even one false move. There are no second chances in this business and, until the law catches up with the reality of doing business online, its every man and woman for themselves.
2. SOME THINGS COST MORE THAN MONEY
The second point to note is that Jan allowed her registration to lapse because she wanted to spend $10 rather than $35 (per year) to renew the name. That decision cost her a whole lot more than $25. Once your good name and reputation are cast into doubt, no amount of money can get them back.
I know Network Solutions cop a lot of flak and possibly deservedly so, if some of the stories Ive heard are true. All I know is that my domain names are registered and renewed with them and I havent had any problems (touch wood).
Bottom line, make sure your names are registered, stay registered and that you use a reputable domain registrar.
3. KNOW YOUR RIGHTS
= Domain Name Registrations Generally
As a general rule, you can register any domain name that is not already registered (subject to trademark considerations discussed below). If your domain name is sufficiently distinctive, for example, jtdbizopps.com, the bit before the .com may also be a common law trademark (unless, of course, its registered and then its a registered trademark). If you DO have a distinctive domain name, then the discussion in the next section applies to you.
If you dont have a distinctive domain name, however, and by this I mean a name that is "descriptive" or in general usage, for example, "home-business.com", then this name will be neither a common law trademark nor a registrable trademark.
In this case, once youve lost your domain name registration, you are, not to put too fine a point on it, screwed. You dont have much in the way of recourse other than for the "generic" legal avenues which may well be too expensive for you to pursue. These avenues are discussed below.
= Domain Names and Trademarks
On the other hand, if you have a distinctive domain name (i.e., one that is not in common usage), then that name is also likely to be a common law trademark (unless, as stated above, youve registered it, in which case its a registered trademark. And, if you do have a common law trademark, I would recommend that you register it. Registration can only strengthen your position.)
The law generally sides with the pre-existing trademark owner over the domain name holder. In addition, the U.S. has enacted the federal Anti-Cybersquatting Consumer Protection Act (the "Act"). Under the Act, you can sue a cybersquatter to get back your domain name and sometimes damages to boot.
So, whats actionable under the Act? Heres an extract from the Act itself:
"A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark ... if, without regard to the goods or services of the parties, that person -
(i) has a bad faith intent to profit from that mark ...; and
(ii) registers, traffics in, or uses a domain name that -
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a [registered] trademark ..."
In terms of what constitutes "bad faith", the Act provides that the court may consider factors (among others) such as:
"The persons [i.e., the alleged cybersquatters] intent to divert customers from the mark owners online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; and
"the persons offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the persons prior conduct indicating a pattern of such conduct."
A common problem is identifying the culprit. In Jan Tallent-Dandridges case, for example, the only information about the perpetrator is:
offers@NameRegister.com
Registrant:
Dave Web (JTDBIZOPPS-COM-DOM)
Buy This Domain
5 Tpagrichnery St ., # 33
Yerevan, Armenia 375010
AM
208.978.3555
208.978.3555
offers@NameRegister.com
Call me skeptical, but somehow I doubt thats a real name and address. Fortunately, the Act has anticipated this problem:
"The owner of a mark may file an in rem civil action against a domain name [an "in rem" proceeding is an action against the thing rather than against a defendant - in this context, it means that the court can make an order in relation to the domain name itself rather than against Dave Web personally such as ordering him to surrender the domain name] ... ".
And as for remedies, assuming you are able to identify your particular scumbag, these include injunctions and damages (either actual or, in a case where your individual name is at issue, statutory damages of between $1,000 and $100,000 per domain name).
= Generic Legal Avenues
Whether or not you can pursue an action under the Act, there are a number of legal avenues open to anyone in Jans situation (and by that, I mean, someone who is using the domain name to point to a site that damages your reputation).
First off, lets recognize this practice for what it is. Extortion. Pure and simple. Its a crime. So is criminal defamation.
Write a strongly worded cease and desist letter to the offender, threatening to report them to the District Attorney and/or the police and the Federal Trade Commission as well as instituting a civil suit. You are more likely to get a result if the letter comes from your attorney.
If the offender doesnt comply, report them. As for what action will be taken, your guess is as good as mine but at least youve done what you can.
If you have the resources to do so, you can also bring civil proceedings against the offender on the same grounds. The conduct in question is egregious enough that you may well get punitive damages awarded in your favor.
Finally, and I HATE to even suggest this, the most cost-effective option of all may be to pay what is demanded. That at least gets the domain name back under YOUR control where it belongs. And theres nothing to stop you turning around and reporting the individual in question to the DA, police, FTC etc.. In fact, paying over the money may be your best chance of identifying the perpetrator so you can initiate a criminal prosecution.
Of course, all of this is damage control which is a VERY poor substitute for prevention. So go back to Item 1. and calendar your domain name due dates to avoid getting into this mess in the first place.
About the Author
Elena Fawkner is editor of the award-winning weekly ezine, A Home-Based Business Online, a down-to-earth publication containing practical home-based and online business ideas, telecommuting job listings, original articles, free e-books and much more. She also runs the A Home-Based Business Online website at fawkner.com. You can subscribe to her newsletter at the site.
elena@ahbbo.com
http://www.fawkner.com
You know what cybersquatting is, right? Its when someone registers a domain name that heretofore has been someone elses trademark, with the intent to hold the name for ransom. Sometimes these people identify trademarks in the market place and snap up the domain name figuring that, sooner or later, the owner of the trademark is going to want to register the domain name and may even be prepared to pay handsomely for the privilege.
Other times, and this may even be worse, these trolls seize domain names that have lapsed due to their owners failing to renew them in time. When the former owner tries to renew they soon learn to their horror that someone else has gazzumped them and are demanding several hundreds or thousands of dollars to return their property to them. As reprehensible as this practice is, theres nothing new about it and the courts are chock-full of cases brought by the outraged victims.
But put *yourself* in the shoes of the poor person who has unwittingly allowed her domain name registration to lapse only to find that "Dave Web" is now the rightful owner and wants $550 from you to give it back.
Now put yourself into these size elevens ... not only has Dave Web kidnapped your domain name, the very one that used to point to the site containing all of your hard work for the past three years, the domain name that is synonymous with your hard-earned reputation, not only that ... it now points somewhere else.
To a porn site.
We have now graduated from "mere" cybersquatting to criminal extortion. Not to mention criminal defamation.
This, believe it or not, is what happened to Jan Tallent-Dandridge just this week. Many of you will know Jan as the publisher of Rim Digest (http://www.rimdigest.com). You may also be familiar with her other websites, http://www.marketingwarrioress.com and http://www.jtdbizopps.com, although if you tried to visit the latter site today, youd get a rather unpleasant surprise. This is the domain name hijacked by Dave Web.
To give you the background to this sorry tale, I asked Jans permission to reprint her email to me
"... I had a domain name, jtdbizopps.com, for over two years but did not renew it. Instead I set up marketingwarrioress.com as a mirror and quit running ads, swaps, etc. for the old name.
"When it came up for renewal, I was going to renew it just to keep it from being used for a year or so as I still had ads and link swaps out there I could not track down.
"Network solutions would not release the name to me without my paying them $70 for 2 years and THEN transferring it somewhere else. I felt this was ridiculous since namebargain.com, etc. are only $10 or so a year.
"I did not renew in time and when I did try, about a week after the cancellation date, it was "in purge", to quote NS, and I would have to wait 30 days or so for it to become available again.
"During this time an individual bought it somehow and offered it back to me for $550.00.
"Needless to say, I declined, number one, I did not want to USE the name anyway and number two, that was ransom!
"Well, tonight I found out that this company is parking a PORN site at that domain name and once again offered to sell it back to me for $550.00. I feel this is obvious blackmail but not only do I not have the money, I would not pay that ridiculous amount even if I could.
"My eBook had a "live" link that was accidentally left as jtdbizopps.com instead of marketingwarrioress.com though both my compiler and I thought they had all been changed.
"I was told off by a new subscriber who eagerly downloaded my eBook and then clicked the link that went straight to the porn site. I have spent the past 3 years working myself half to death, as I know YOU know about, and now my credibility and NAME are in danger due to this "person" using my ex-domain for this purpose.
"I know there is no way to get the name back without paying for it and/or stopping this "person" from using it for this or any other business, but I am hoping there is some damage control I can do to maybe make it worth his/her/ITS while to discontinue using a domain I can prove I had been using for over 2 years in this way if it hurts my business or name in any way.
"Sorry for rambling, but once I quit crying, screaming, throwing up, crying and screaming some more I am now down to incoherent stuttering.
Jan T-D
Marketing Warrioress and Publisher
(Rim Digest)
charter iCop member"
My primary motivation in writing this article is to help get the word out about what has happened to Jan so that, hopefully, those who do not know her will realize that she is, in fact, an innocent victim in all of this and not some nefarious person who gets her kicks from enticing people to visit a porn site when they thought they were visiting an internet marketing site.
That said, what lessons can we all learn from Jans experience? Well, there are a few ...
1. KNOW WHEN YOUR DOMAIN NAMES EXPIRE AND RENEW THEM BEFORE THEY LAPSE
First and foremost, know when your domain names expire and take steps to renew them before they lapse. As Jans experience illustrates only too well, there are vultures out there just waiting to swoop if you make even one false move. There are no second chances in this business and, until the law catches up with the reality of doing business online, its every man and woman for themselves.
2. SOME THINGS COST MORE THAN MONEY
The second point to note is that Jan allowed her registration to lapse because she wanted to spend $10 rather than $35 (per year) to renew the name. That decision cost her a whole lot more than $25. Once your good name and reputation are cast into doubt, no amount of money can get them back.
I know Network Solutions cop a lot of flak and possibly deservedly so, if some of the stories Ive heard are true. All I know is that my domain names are registered and renewed with them and I havent had any problems (touch wood).
Bottom line, make sure your names are registered, stay registered and that you use a reputable domain registrar.
3. KNOW YOUR RIGHTS
= Domain Name Registrations Generally
As a general rule, you can register any domain name that is not already registered (subject to trademark considerations discussed below). If your domain name is sufficiently distinctive, for example, jtdbizopps.com, the bit before the .com may also be a common law trademark (unless, of course, its registered and then its a registered trademark). If you DO have a distinctive domain name, then the discussion in the next section applies to you.
If you dont have a distinctive domain name, however, and by this I mean a name that is "descriptive" or in general usage, for example, "home-business.com", then this name will be neither a common law trademark nor a registrable trademark.
In this case, once youve lost your domain name registration, you are, not to put too fine a point on it, screwed. You dont have much in the way of recourse other than for the "generic" legal avenues which may well be too expensive for you to pursue. These avenues are discussed below.
= Domain Names and Trademarks
On the other hand, if you have a distinctive domain name (i.e., one that is not in common usage), then that name is also likely to be a common law trademark (unless, as stated above, youve registered it, in which case its a registered trademark. And, if you do have a common law trademark, I would recommend that you register it. Registration can only strengthen your position.)
The law generally sides with the pre-existing trademark owner over the domain name holder. In addition, the U.S. has enacted the federal Anti-Cybersquatting Consumer Protection Act (the "Act"). Under the Act, you can sue a cybersquatter to get back your domain name and sometimes damages to boot.
So, whats actionable under the Act? Heres an extract from the Act itself:
"A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark ... if, without regard to the goods or services of the parties, that person -
(i) has a bad faith intent to profit from that mark ...; and
(ii) registers, traffics in, or uses a domain name that -
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a [registered] trademark ..."
In terms of what constitutes "bad faith", the Act provides that the court may consider factors (among others) such as:
"The persons [i.e., the alleged cybersquatters] intent to divert customers from the mark owners online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; and
"the persons offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the persons prior conduct indicating a pattern of such conduct."
A common problem is identifying the culprit. In Jan Tallent-Dandridges case, for example, the only information about the perpetrator is:
offers@NameRegister.com
Registrant:
Dave Web (JTDBIZOPPS-COM-DOM)
Buy This Domain
5 Tpagrichnery St ., # 33
Yerevan, Armenia 375010
AM
208.978.3555
208.978.3555
offers@NameRegister.com
Call me skeptical, but somehow I doubt thats a real name and address. Fortunately, the Act has anticipated this problem:
"The owner of a mark may file an in rem civil action against a domain name [an "in rem" proceeding is an action against the thing rather than against a defendant - in this context, it means that the court can make an order in relation to the domain name itself rather than against Dave Web personally such as ordering him to surrender the domain name] ... ".
And as for remedies, assuming you are able to identify your particular scumbag, these include injunctions and damages (either actual or, in a case where your individual name is at issue, statutory damages of between $1,000 and $100,000 per domain name).
= Generic Legal Avenues
Whether or not you can pursue an action under the Act, there are a number of legal avenues open to anyone in Jans situation (and by that, I mean, someone who is using the domain name to point to a site that damages your reputation).
First off, lets recognize this practice for what it is. Extortion. Pure and simple. Its a crime. So is criminal defamation.
Write a strongly worded cease and desist letter to the offender, threatening to report them to the District Attorney and/or the police and the Federal Trade Commission as well as instituting a civil suit. You are more likely to get a result if the letter comes from your attorney.
If the offender doesnt comply, report them. As for what action will be taken, your guess is as good as mine but at least youve done what you can.
If you have the resources to do so, you can also bring civil proceedings against the offender on the same grounds. The conduct in question is egregious enough that you may well get punitive damages awarded in your favor.
Finally, and I HATE to even suggest this, the most cost-effective option of all may be to pay what is demanded. That at least gets the domain name back under YOUR control where it belongs. And theres nothing to stop you turning around and reporting the individual in question to the DA, police, FTC etc.. In fact, paying over the money may be your best chance of identifying the perpetrator so you can initiate a criminal prosecution.
Of course, all of this is damage control which is a VERY poor substitute for prevention. So go back to Item 1. and calendar your domain name due dates to avoid getting into this mess in the first place.
About the Author
Elena Fawkner is editor of the award-winning weekly ezine, A Home-Based Business Online, a down-to-earth publication containing practical home-based and online business ideas, telecommuting job listings, original articles, free e-books and much more. She also runs the A Home-Based Business Online website at fawkner.com. You can subscribe to her newsletter at the site.
elena@ahbbo.com
http://www.fawkner.com
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