YOU FORGOT TO RENEW YOUR DOMAIN
It’s an all-too-common scenario. Years ago, you bought a domain name based on your personal name - SuzieMcBindle.com, let’s say - and used it to advertise and run your small wedding photography business. But you went through some rough times, you were slammed with customers and juggling a dozen projects at once, and when the time came to renew your domain, it slipped your mind. By the time you realized you had lost control of SuzieMcBindle.com, someone else had bought it and changed everything. Now instead of wedding photography, it’s someone trying to sell cheap off-the-rack wedding dresses. So how do you get your site back? You may have forgotten to renew, but it is your personal name, after all. Doesn’t that count for something? It might.
Domain names are assigned by an organization called ICANN, or the Internet Corporation for Assigned Names and Numbers, which is an international organization that simply makes sure web addresses are consistent. When a domain name dispute occurs, ICANN will refer you to one of several dispute resolution services that vary depending largely on where you are in the world - there is the Arab Center for Domain Name Dispute Resolution, or ACDR, the Asian Domain Name Dispute Resolution Center, and several others. Most disputes in the U.S. will be handled by the National Arbitration Forum, or NAF. If the term “arbitration” is new to you, it is essentially Court Lite - instead of taking your dispute to an actual state or federal-run court, you pay a private company to listen to your dispute and adjudicate it along the same rules as a real court would, and you agree to abide by the results. Arbitration is usually a faster but more expensive alternative to the court system, and some organizations like ICANN, which are multinational, require that you use arbitration.
HOW TO GET IT BACK
In order to retrieve SuzieMcBindle.com, you’re going to have to file a complaint with the NAF, and if you’re filing a complaint, you need a cause of action. I mean, you lost your domain because you didn’t pay, and whoever bought it, bought it fair and square. There needs to be some reason why you should get it back. In the case of SuzieMcBindle.com, you’ve got two good arguments.
SHOW THAT THE DOMAIN WAS ALSO YOUR BUSINESS TRADEMARK
The first is that your personal name, Suzie McBindle, is also the name you use for your professional services - and what happens when you use any word, symbol, or device to identify your services? That word becomes a trademark. You can argue that whoever is using SuzieMcBindle.com to sell wedding dresses is infringing your trademark, by using your professional name as the domain name for their business. However, it’s important to understand that merely using a word as an identifier for your business only grants you common-law trademark rights, which arise from state law. If you want federal trademark rights, you have to register your trademark with the USPTO - the United States Patent and Trademark Office. Typically, federal trademark rights are superior to mere common-law state trademark rights, because they are enforceable anywhere in the U.S. (or in any jurisdiction that has mutual intellectual property agreements with the United States), while state rights are only enforceable within that state. But in this dispute, it matters less, because we’re talking about a website on the Internet, and the Internet is everywhere. If you have trademark rights over a website in one state, then you can sue under those trademark rights even if consumers are accessing the site from other states, because they could access it in your state.
SHOW THAT THE DOMAIN WAS TAKEN AND USED IN BAD FAITH
Your second good argument comes from Title 15 of the United States Code, Section 1125(d)(1)(A)(i). This portion of the Lanham Act (which controls federal trademark law) is called the Anticybersquatting Consumer Protection Act, and it is designed to protect people from pretty much exactly what has happened to SuzieMcBindle.com. Section 1125(d) allows you to recover a domain name that is either your trademark or your personal name, that was acquired and used in bad faith for profit - like someone taking SuzieMcBindle.com and using it to sell bootleg wedding dresses. That person knew that you were a wedding photographer, and they used the goodwill inherent in your name to advertise a product that is related to the product you provide - instead of wedding pictures, it’s wedding dresses.
But it’s important to understand that the ACPA will really only protect you against people who usurp your personal name for commercial purposes. To understand, consider the case of BrettKavanaugh.com. Brett Kavanaugh is the Trump-appointed Supreme Court Justice who was recently confirmed by a tight Senate vote amidst massive protests and a barrage of credible allegations that he is a severe alcoholic, violent drunk, and serial rapist. Mr Kavanaugh himself apparently had never purchased BrettKavanaugh.com, and so someone else did and turned it into a resource center for sexual assault victims. Mr Kavanaugh would not be able to avail himself of the ACPA to get control of BrettKavanaugh.com, for two reasons. The first is that whoever bought the domain is not using it for commercial purposes or with any intent to profit from the use of Mr Kavanaugh’s name. They are definitely commenting on Brett Kavanaugh, but not profiting, and that brings us to the second reason, which is that because Mr Kavanaugh is a public, political figure, any commentary about him is protected by the 1st Amendment. Trademark law gives a person strong powers to prevent others from using their name or speaking poorly of them, but once that person becomes a political figure, those laws are useless to prevent political speech and commentary. Imagine if we couldn’t mention the multiple rapes and continuous acts of treason committed by Mr Trump because his name is a registered trademark! The 1st Amendment is necessary indeed.
Once you’ve filed a complaint with the NAF stating the reasons why SuzieMcBindle should be returned to you, the current owner of the domain has a short period of time to respond, and then the complaint and response will be adjudicated by a panel of either one or three judges (you get to pick, and three judges may be more fair but it’s also more expensive). The panel will return decisions far more quickly than a traditional court, typically within a few weeks, and if the panel decides in your favor, you simply take their decision to your registrar (a registrar is the company or organization from whom you bought the domain name originally, like GoDaddy.com) and the registrar will return the domain name to your control.
Retrieving a lost domain name containing your personal name or trademark is a fairly simple process, but be warned that it can be expensive, with filing fees for the NAF being upwards of $1,000. If you can’t afford the NAF’s fees, you can file in a traditional court for significantly cheaper, but be warned that the decision will take a lot longer to reach. But no matter what, a lawyer can help guide you through the process and make sure that your arguments will work. If your domain name has been usurped in the same was as SuzieMcBindle.com, don’t hesitate to reach out to an attorney.