In a column published in the Sunday Review section of the New York Times last Sunday, I was surprised and pleased to see an opinion piece by writer Delia Ephron about her struggles to reclaim her domain name, DeliaEphron.com after a family member had let the registration lapse. Ms. Ephron describes what so many FairWinds clients feel when they discover that someone else, usually a bad actor, has scooped up their domain name. “I was angry, and I wanted my name back,” Ms. Ephron wrote. “It represented my life — my hard work, my accomplishments, my point of view, my mother’s originality. I guess I was proud of it. I certainly didn’t want anyone exploiting it.” For Ms. Ephron, who relied on her domain name to market and promote her books, the stakes around recovering it were high. While she eventually got her name back after filing a UDRP Complaint, the entire experience left Ms. Ephron feeling angry, violated, and somewhat helpless.
Ms. Ephron is one individual with one domain name. Multiply her frustration by hundreds, often thousands, of domains and you begin to approach the experience of major companies and organizations in the domain name space today. While Ms. Ephron was able to recover her domain somewhat painlessly (the UDRP is usually much less of a hassle than arguing with cybersquatters), losing control of a domain name has the potential to result in a chain of negative events: reputation-damaging content that appears on the sites hosted by the domains can become associated with your brand; consumers may be exposed to negative experiences; and ultimately, you may have to engage in a drawn-out and expensive recovery process. The experience of liberal political pundit Keith Olbermann after the sale of KeithOlbermann.com to the right-leaning website, The Daily Caller, is one well-known example of how this can play out. However, like Ms. Ephron, Mr. Olbermann is one person, but these concerns are magnified when there are hundreds or thousands of domain names and brands to keep track of, as many companies must.
For companies, the experience can be mitigated, however, by the fact that they usually hold the trademark for their brands. So when a domain does end up in the wrong hands, proving their rights to it under the rules of the UDRP can be relatively simple. Individuals that don’t have trademark rights to their name, however, can face much greater difficulty. Many actors, singers, and other entertainers trademark their names early on in their careers. But often business executives and politicians fail to take similar steps (and Mr. Olbermann is currently in this camp).
In cases where both a Complainant and a Respondent of the same name are vying for a corresponding domain, the UDRP Panel’s decision will come down to other factors, such as the content maintained on the associated website. Content that is directly competitive with, or profits from, the fame of the Complainant’s trademark may be ruled an illegitimate use of the domain. But a personal website with no reference to the other party typically will often be counted as a legitimate use.
As always, the best protection against ending up in a situation like Ms. Ephron or Mr. Olbermann is a proactive approach: register the most prized variations of your name under your ownership, maintain relevant content on them, don’t forget to renew them when the time comes, and police the wider space for any names that potentially take advantage of your work or reputation.
