Invasion of the Domain Snatchers

The issue of cybersquatting is a real threat to any company that maintains a presence on the Internet. Unfortunately, cybersquatters are usually very well-versed on the present state of the law. As such, they devise countless schemes and strategies in order to exploit your trademark in order to drive traffic to their websites. Each day new problems are presented. Trademark owners and their trademark attorneys face a constant battle against unscrupulous uses of trademarks. To make matters worse, many domain registrars (companies that are authorized to sell domain names) have begun a practice of providing lists (for a subscription fee) of domain names that are coming up for renewal.

While this seems harmless there are a few pitfalls for the unwitting owner of a domain name. For instance, while most domain names are set to renew automatically (since you may have left a credit card on file with the registrar) others are not set to renew automatically. While most registrars will make an attempt to contact you before the expiration of your domain name there is no guarantee that you will in fact remember to renew or otherwise be reminded to renew before the expiration. Let's assume that you do not remember, or that you were not notified by your registrar to renew. Subscribers to the list of domain names that are about to expire will have the opportunity to snatch up your domain name by backordering it. The moment your domain expires the domain snatcher will take possession.

Sounds like good old American capitalism, right? You snooze you lose, right? Well, the real problem arises when you or your customers/clients try to access your domain only to find that it now points to a competitor's site, or say, a pornography site. What will follow will be a costly and lengthy fight with both the registrar and the domain snatcher. The registrar will wash its hands of the matter and most likely state (1) it tried to contact you to remind you to renew the domain; (2) state that you should have selected to have the domain automatically renew when you purchased the domain; or (3) a combination of 1 and 2.

Frustrated, you will then attempt to track down the domain snatcher. Good luck. Most will be registered to offshore accounts or will have false contact information.

What's a trademark owner to do? Well, it depends. If the misappropriated domain name contains your trademark which is registered with the United States Patent & Trademark Office you may have several options. The scenario may constitute cybersquatting entitling you to seek remedy in either federal court or in a forum designed exclusively for domain disputes such as UDRP. Whatever your avenue, you can expect a costly and lengthy process, even if the action is not contested.

Tips to avoid the above:
1. Make sure that your domain name(s) are set to automatically renew upon expiration;
2. Make sure that your registrar is notified if you change your address;
3. If you own a trademark that is part of your domain name, take the necessary steps to register the trademark with the United States Patent and Trademark Office;
4. If you suspect a problem with your domain name, act fast and contact trademark counsel.

Frank Herrera
Trademark Headquarters