Domain name scams are an increasingly common source of worry for our clients. If someone is using your name as part of a domain name scam, here’s what you can do.
ARE THEY USING YOUR BRAND NAME?
There are tens of millions of domain names registered every year. No wonder it’s hard to find a good one for a new business.
Naturally, there’s a lot of competition for familiar, everyday words. This can lead to understandable clashes.
IS IT A DOMAIN NAME SCAM?
Some domain name conflicts are legitimate. But there are also people who register domain names in hope of holding a brand name hostage, and forcing the owner of the business name to pay an outsized fee to claim the site. That’s called cybersquatting. In Australia, the domain name registration rules forbid this (it’s still common with .com domains registered overseas). It’s also possible for competitors to use a domain name to fool your customers, or play silly games with your reputation.
So you may find that someone has registered a domain using all or part of your brand name. Here are some tips for dealing with this problem.
REGISTER A TRADE MARK
For a start, you’ll be in a much stronger position if you’ve already registered a suitable trade mark. That’s because it brings you special protections under the Trade Marks Act 1995. If the other person is infringing your registered trade mark, you’ll be legally able to prevent them from continuing to use the conflicting brand. You may even be able to force them to transfer the domain name to you.
IS COURT ACTION NECESSARY?
You will not necessarily have to go to court to stop someone infringing your trade mark. It may be sufficient for your trade mark attorney to send a Letter Of Demand.
You might also consider filing a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) or its Australian equivalent (auDRP). This is a relatively easy, inexpensive and quick approach that can be done online. They frown on domain name scams.
As a trade mark owner, you would have additional rights which you can enforce under Australian law. But even if you don’t have a trade mark, you still have the option of pursuing the other party under common law, or Australian Consumer Law. For example, you might go to court and seek remedies for ‘passing off’, misleading or deceptive conduct, or perhaps copyright violations.
You may be satisfied with an injuction that prevents the other person from continuing to use your name. It’s also possible to be awarded a payment for the damage the other party has done to your brand.
However, taking action in court is an expensive and time-consuming approach.
BEFORE YOU START
First, work out (in consultation with legal counsel) whether you really do have the legal grounds to take action. In addition, you’ll want to consider whether you have reasonable chances of succeeding in proceedings against the other party. This will enable you to decide whether to take action, and how to proceeed with your challenge.
Second, find out who is using the domain name. You can look this up by using a suitable WHOIS search. That’s done through ICANN for .com domains, or auDA for .com.au domains. This will get you contact details and also help you work out whether they’re in Australia (and subject to local court action). Overseas parties are tougher to deal with. In those cases, you may find that your practical options are limited to filing a complaint with the registrar (more details on this, below).
Third, do a little research to get a sense of whether they’re a well-established business or a small player. It can sometimes be a poor use of resources to pursue small players in court. You’re unlikely to ever receive any payment for damages from them.
Fourth, establish what rights they may actually have. Perhaps they are not actually running a form of domain name scam. It’s possible that they have an apparently legitimate reason to use your name. In that case, complaining to the domain name register may not do you any good. However, even if they are acting in good faith, you may still have overriding rights that you can enforce in court. Especially if the way the other business is using your name could confuse your customers, lose you money or damage your brand. If you’ve been badly affected, court may be your best option.
ASK YOURSELF: WHAT OUTCOME DO I ACTUALLY WANT?
If you just want them to stop using the domain name (or if you want it transferred to you), then UDRP / auDRP is a good first step. You might consider this approach if the other party’s actions aren’t costing you a significant loss of income, or damange to your brand.
You might need to back that up with a Letter Of Demand. Your trade mark attorney will instruct the other party to stop using your name.
On the other hand, if they have been costing you money, losing you customers or damaging your brand, you may want to get a formal order for them to stop. You may also wish to pursue damages. This is especially important if you think they’re likely to continue infringing your rights in the future. If so, then you will need to consider taking action in court. Again, this makes better sense if they are an established business and likely to have enough money to satisfy a judgement for damages and/or costs.
TALK TO YOUR TRADE MARK ATTORNEY ABOUT DOMAIN NAME SCAMS
This overview aims to help clients and potential clients understand the big picture about domain name scams and cybersquatting. But every case is decided on its own merits – no two cases are identical. So you’ll need to seek proper legal advice about your own specific circumstances. Naturally, we’ll be happy to have a brief discussion and help you consider the best way forward.