Online Marketing - Marketing Don

Domains and Trademark Infringement – Steps To Get Your Name Back

Someone has a domain name with your exact or similar trademarked name in it, now what?

In the various agencies and companies I have worked for, domain trademark infringement seems to be coming up more and more.  There are various forms of domain trademark infringement.  There is cybersquatting (sitting on or trying to use someone’s trademarked name for profit – then possibly selling the name to the trademarked owner for a high price).  Then there is typosquatting (similar to cybersquatting, but buying variations and misspellings of the trademarked names).  Sometimes these domains are bought simply to hold on to hoping the trademarked owner will buy them, sometimes they are used for content ads and affiliates to gain profits from people typing in these names and misspellings.

First check to see who is using your name.   If you go to Network Solutions Whois page and type in the domain, in most cases, this will give you the information you need.  If not try some of the other registrars whois pages.  You may get more information from them.

Once you have their contact information, there are several different ways to approach the person.  I recommend the “nice” approach.  Even though this person may be violating laws, they can make the transition very difficult for you.  It may take several months and several thousands of dollars if they do not cooperate.  I prefer email for 2 reasons: a) it leaves a paper trail b) the person may not get as defensive and may be more likely to transfer if they can reply via email.

1.  Email the person.  Just a basic letter similar to:

Dear ……
My name is [name] and I am the [title] for [title of your company].  We recently noticed you own a domain name that is very similar to our trademarked name. 
We kindly ask that you transfer the domain ownership to us by [date 2 weeks from today].  If we do not hear from you by that date, we will be forced to pursue the matter through legal means.
Please contact me before above to for transfer instructions.
Thank you

2.  If still no reply, you may want to have your attorney generate a cease and desist letter.   The letter may have more impact coming from an attorney.  Again, ask for the immediate transfer and consequences if transfer is not completed by a specific date.

3. If still no reply, here is where is may get tricky.  You now have the choice to go through the procedure to get the domain legally or send one more letter asking for the domain with a price.  Yes, it may be legally your domain, but as mentioned above, to go through the process to get the domain may take several months and cost thousands of dollars.  I would recommend one final attorney letter to purchase the domain.  Depending on the name, you may ask offer as little as $500. 

4. Still nothing? Visit the ICANN instructions by contacting the registrar and going through the long process of forcing the person to release the domain.  I have never gotten this far and would love to hear from someone that actually had to go through this process and how it went.

Other resources:
ICANN
Wikipedia