Find out if your Domain Name is Available before it is too late!
Posted by Shanna Gordon on Mon, Jan 10, 2011
A few months ago one of my colleagues here at BrandProtect, Jamila Hunte, wrote a piece entitled That’s my Trademark, But Why is it in your Domain Name? Is the UDRP for me?. I am not 
going to go into the specifics of how to file one, but the answer that she arrives at is that if a dispute over a trademarked domain meets the specific criteria for a UDRP filing (e.g. the criteria that are outlined by ICANN) then a UDRP is an excellent choice for remediation because of its effectiveness and cost efficiency as compared to formal legal proceedings. However, it can’t be stressed enough that abusing the UDRP will very likely do irreparable damage to one’s reputation vis-à -vis any potential filings in the future. For success to be achieved you need to follow the rules.
But what happens in those cases where you aren’t able to use the UDRP, or any of the other legal avenues, to reclaim ownership of your trademarked domain? This happened to a client of mine a short while ago, here’s how it played out.
Recently my client, a regional retailer based in the United States, rolled out a new program intended to aid customers purchasing goods online. Everything was in place, they had a nice logo 
picked out, things seemed to be ready to go. Then they ran into the roadblock; one of the domain names they wanted associated with this new program (the highly coveted .com gTLD) had already been registered by someone else and was resolving on a parked webpage with no reference to my client apart from the domain name itself. My client came to me and requested a letter be sent to initiate the cease and desist process with a view to a full transfer of the domain’s ownership. And so I did.
After a few auto-reply e-mails from the registrant who are themselves a retail outlet (only they are located in Scandinavia) I decided it was time to escalate the incident. After a few e-mails and phone calls with my client we decided that a UDRP may need to be filed in order to have the domain transferred. In light of that, I did some research that would help us with filing the UDRP. What I found, however, was that the offending domain had been registered in the summer of 2009, which was actually earlier than my client had registered the trademark for their own use; roadblock number two.
What then was our next course of action? We tried the domain owner and there was little headway made; the ISP wouldn’t likely be able intervene because there was no content related to my client on the domain’s webpage; and a UDRP filing would be ineffective because the domain was registered before my client registered the trademark and as I mentioned before, you don’t want to file an invalid claim. After another series of calls and messages I advised my client to make sure that they had registered their desired domain name in all of the other gTLDs (.net, .biz, .info, etc.). Furthermore my client and I came to the conclusion that they should attempt to contact the registrant directly to try to negotiate a domain transfer; the status is still ongoing.
The moral of this cautionary tale is simple; look before you leap. Doing a bit of research before registering a domain name, even if it contains a registered company trademark, can save you the time, effort and money required to correct a mistake. This is extremely important when dealing with something as important as a new product or service (especially if that service is an online service). You don’t want your customers to be redirected away from your site just because you overlooked a crucial domain name.