The Dotcom Wars

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What happens to the website when an impostor poses a domain name threat?

Dotcom is officially a noun these days. Take it from “a company that sells goods and services on the internet, especially one whose address ends ‘.com’.

A search for “domain name recommendation tools” on the internet yields over 100 tools. When you locate the right domain, the pain of being lost in the rabbit hole of locating it is rewarded. A excellent domain name combines originality, ingenuity, and “simple to remember” terms to entice potential clients. It’s the first piece of digital real estate you’ll have.

But the higher you aim for; you could end up on either side of the Domain-name wars. All this can begin with the simple act of someone else impersonating your website. Or in some cases, you may end up being the (unintended) impersonator.

And it’s easy to be part of this puzzle if you’re not paying enough legal attention. Let us explain.

Enter Walmart, the world’s largest retailer.  Sam Walton, the owner, owns <>, <>, and <> among other domains. But several others own other domain names containing the phrase “Walmart.” In Wal-Mart Stores, Inc. v. xc2(Case No. D2006-0811), Walmart sued xc2 of Hong Kong, who held the domain name <>.   Walmart alleged xc2 was using this domain name in bad faith, to redirect traffic to Walmart’s competitors. The judges found the domain name  deceptively similar to and ruled to transfer the domain name <> to the complainant, as per paragraphs 4(i) of the Policy and 15 of the Rules.

In another case, Wal-Mart Stores, Inc. v. Traffic Yoon (Case No. D2006-0812), Walmart sued Traffic Yoon of Seoul, for the domain <>. Walmart alleged the disputed domain name being virtually identical and confusingly similar to the WAL-MART mark. The judges, however, dismissed the complaint, stating it is obvious to any normal internet user that Walmart will not use the disputed domain name to promote its goods or services. Here, the judges dismissed the case without proceeding to the discussion of points 4(ii) or 4 (iii) of UDRP policy.

According to the Internet Corporation for Assigned Names and Numbers (ICANN), the global non-profit organization which coordinates the maintenance and procedures of databases related to the domain namespace, the .sucks domain registrar is predatory, exploitive and coercive. ICANN does not decide disputes related to gripe sites / suck sites based on the standard copyright or trademark laws. It rather decides based on WIPO Uniform Domain Name Dispute Resolution Policy (UDRP) and Rules.

Website owners who register with ICANN become bound to these rules, (since almost all servers of the world are affiliated to the ICANN registry.)According to paragraph 4(a) of URDP policy and paragraph 15 of rules, the ICANN can deny similar sounding or confusing domain names which create genuine confusion in the mind of the ordinary internet user.

These days if you’re looking for domains for your business, chances are the favourite ones don’t come easy. Companies hell-bent on acquiring a certain domain are driving prices upwards. Just to stress the point – was bought for an astounding $1,200,000 in 2014. In the same year, found its buyer for $1,261,000.

But what could be more expensive than the domain itself? This may not appear evident, but gaining your desired domain appears to be the relatively simpler part when legal concerns are overlooked in the process becomes the more costly and difficult affair.

Prior vetting on legal grounds makes sure lawsuits are the last thing to worry about while you’re doing the best for your business. A professional attorney will guide you through the process, free of hiccups and help you pre-empt or counter legal tangles related to your domains.

Mrudula Manappatt

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

By |2022-07-21T05:07:30+00:00July 21st, 2022|IP Unplugged|0 Comments

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