Category: Domain Names

Ten Essential Rules for Internet Brand Names

1. Make sure that the .com domain name is available. Only select names that will correspond to a .com domain name. Consumers will head straight to the .com. Have you ever entered .net or .biz in a URL? I haven’t. And if I can’t find the web site on my first try, I jump to Google®. If the .com domain is not available, select a different name and don’t fall victim to the “hyphenated” domain name. Have you ever used – or thought of using – a hyphen in a domain name?

2. Keep it short and simple. With all of today’s advertising noise and clutter, keeping the name short and simple is critical. Difficult-to-remember domain names are likely to result in misspellings, which may result in the loss of revenues to “typo-squatters.” Typo-squatters will “steal” your misspelled domain name and divert Internet traffic from your web site while generating revenue in the process. Don’t let that happen to you. Some of the best short and easy-to-remember Internet brand names are Yahoo, Amazon, Yelp and Woot.

3. Select a name that is alliterative. Brand names that are alliterative are easy to remember. Dunkin Donuts, Kristy Kreme, Blackberry and Roto Rooter are all good examples.

4. Select a name that is speakable. A name that is speakable is also easy to remember. Speakable names tend to receive more word-of-mouth advertising. Speakable names include Sears, Colgate, Pepsi and AeroMotive. Unspeakable names include Tokico, PLP and Chipolte. Names that are difficult to pronounce are difficult to remember, which spells disaster.

5. Spellability. Be sure that your Internet brand name is easy to spell. Hard to spell domain names tend to lose Internet traffic for their owners. They also tend to be victims of Internet pirates a/k/a “typo-squatters.”

6. Suggestive names. Names that are suggestive of the product category will tend to attract customers and may even help build customer loyalty. A suggestive name helps customers identify the attributes of a product and what a brand represents. Suggestive names include Die Hard, Close Up and Block Buster.

7. Reserve other domain name extensions. Registering the .com domain name is critical. But don’t forget to make defensive registrations for other extensions, including .net, .biz and .mobi. Registering other domain name extensions is an inexpensive way to defend against third parties from registering your brand names with other extensions and then profiting from them.

8. Reserve domain names for commonly misspelled terms. If your name can be spelled in several different ways, be sure to register, at a minimum, the .com domain name for that common misspelling. Reserving common misspellings of your brand name is another inexpensive way to prevent Internet pirates from diverting Internet traffic from your site.

9. Don’t forget to renew your domain name. Failing to renew a domain name can result in its loss. Not good for an Internet company! If you can afford it, apply for the longest possible term, and then calendar the renewal date.

10. Don’t fall victim to domain name renewal scams. Don’t rely upon third party services to renew your domain name unless you have an existing relationship with that company. Unsolicited renewal invitations should be ignored. Some of those unsolicited renewal invitations are scams. Some of those companies will simply take your money and not pay the renewal resulting in the loss of your domain name. Internet companies that lose their domain names lose what may be their most valuable assets.

UDRP Panelist Slams Complainant With Charge Of Reverse Domain Name Hijacking: Might This Decision Reverse A Longstanding Trend Of Pro-Trademark Owner Panelists and Decisions?

A recent Uniform Domain Name Dispute Resolution Policy (“UDRP”) decision may be seen as a ray of hope for Domainers with respect to reversing a longstanding trend of pro-trademark leaning panelists and decisions. In the case of M. Corentin Benoit Thiercelin v. CyberDeal, Inc.(decided August 10, 2010), single panelist Tony Willoughby pulled out paragraph 15(e) of the UDRP regulations and reprimanded the complainant for abusing UDRP proceedings and for an attempt to reverse hijack the subject domain name.

Complaint, M. Corentin Benoit Thiercelin, runs a company named VirtualExpo, which was registered in 2000. Complainant did not secure trademark registration until 2005. Complainant claimed that CyberDeal, Inc. had registered – and was using – the domain name in bad faith to prevent Complainant from acquiring the domain name for itself. Interestingly, CyberDeal had registered the domain name in 1996, at least four years before Complainant had acquired any alleged rights in the name VirtualExpo and nearly ten years before Complainant secured trademark registration. 
   
Per the decision, prior to the filing of the UDRP proceeding, Complainant’s attorney sent CyberDeal a cease and desist letter alleging that CyberDeal was using the subject domain name in connection with a web site that was “causing commercial as well as image damages for which my client will seek damages.” Interestingly, however, there was no evidence placed in the UDRP proceeding record to suggest that the domain name had ever been put to any use.
 
The panelist considered whether (1) the subject domain name and Complaint’s mark are confusingly similar, (2) the defendant had any legitimate interests in the subject domain name and (3) the subject domain name was registered in bad faith.

The panelist found that the mark VirualExpo and domain name are confusingly similar. The panelist elected to skip prong two of the test and move directly to the issue of whether the subject domain name was registered in bad faith.

The panelist first considered the issue of whether a domain name can be registered in bad faith before trademark rights are acquired by a third-party. Although bad faith will not generally be found when a subject domain name was registered before acquired trademark rights, there are those cases where bad faith may be found. For example, in those instances where a domain name holder had inside knowledge of a trademark owner’s plan to use a certain trademark.

In this case, Complainant’s earliest alleged trademark rights began in 2000, or four years after the registration of the subject domain name. Based upon the record of this case, the panelist stated, “On the papers before the Panel this was a wild, unsupported and wholly misconceived claim.” The panelist continued on to state the following:

“In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.”

Reverse domain name hijacking occurs when trademark owners secure domain names by making false cybersquatting claims against rightful owners of domain names. In those closer cases that result in transfers of domain names to complainants, but still constitute reverse domain name hijacking, places trademark owners in jeopardy of being sued in federal court for reverse domain name hijacking. Although there are no statutory damages for reverse domain name hijacking, the idea of defending a federal court action – not to mention receiving a “black eye” – should cause trademark owners to pause and seriously consider whether to bring arguably baseless UDRP claims.

Could this decision be a turning point for reversing a longstanding trend of pro-trademark leaning panelists and decisions or simply nothing more than a decision regarding clear abuse of the UDRP process?

Should federal trademark law be amended to provide statutory damages for victims of reverse domain name hijacking? What about “attempted” hijacking? I think it should.

What should the standard and statutory damages be? What do you think?