• Protecting Your Internet Domain Name
  • August 21, 2003 | Author: Jonathan P. Miller
  • Law Firm: McNees Wallace & Nurick LLC - Harrisburg Office
  • Domain name owners who carefully monitor the ownership and existence of those names are often shocked to find that the domain name they owned one day is suddenly owned by someone else the next. Such secondary market cybersquatting is becoming a larger issue as domain names that were once registered for relatively short periods, particularly during the height of the dot-com boom, are being re-registered by cybersquatters.

    Often the original domain name owner is unaware that the domain name is no longer theirs. In some unfortunate cases, the original domain name owner has done nothing wrong, but the domain name has been deleted from the central system operated by Verisign, the original domain name registration company and the operator of the master domain name registration database.

    In 1998, the United States government created the nonprofit organization, the Internet Corporation for Assigned Names and Numbers (ICANN) in order to commercialize the Internet. With the domain name marketplace open to competition, ICANN installed a system where the Verisign catalog lists all available and unavailable domain names. The various registrars then compete for domain name ownership.

    ICANN is ultimately responsible for regulating the software to prevent domain names from being registered to multiple companies. Accredited registrars must also sign an Accreditation Agreement, which shields ICANN from responsibility for any errors resulting from the sale of domain names. The accredited registrars are following ICANN's example and include disclaimers of responsibility in their agreements with registering companies. This creates a situation where no party can be held responsible for errors in registering domain names.

    The situation is becoming more serious because of the increasing number of errors throughout the system, caused by both domain name owners and registrars. ICANN's position is that ownership-related disputes should be resolved by the registrars attempting to obtain ownership of the domain name. The general rule is that the company listed in the directory owns the domain name, unless another company can prove that it purchased it earlier.

    The majority of problems arise when a company allows its domain name to expire. Domain names usually expire because the owner's contact information is outdated, or there is no Administrative Contact listed, and the registrar is unable to notify the owner of the pending expiration. When a domain name expires, the registrar becomes the new owner until the name can be deleted from the system. After the domain name is deleted, it is listed as available in the directory.

    Problems also occur when an accredited registrar transfers a domain name because it received a fraudulent e-mail or fax believed to be from the registered owner. Therefore, the directory of domain names may list a name as available even though it has been purchased.

    In light of these problems, all domain name owners should monitor their domain names carefully and check periodically with their registrar to confirm that they are the listed owner and that all of the contact information, particularly the Administrative Contact, is up to date.

    In addition, whenever legally possible and financially prudent, domain name owners should seek to have a federal trademark registration that is identical to the domain name. Trademark registrations often increase the chances of recovering a domain name in an arbitration proceeding against the new owner, at least when the new owner does not have trademark rights in the domain name.

    To protect a domain name, owners should only register with reputable registrars, since not all registrars offer effective protection. In addition, consider investing in the extra services available from registrars for domain name protection. For most domain name owners, spending a little extra upfront will save time and money in the end. Most importantly, domain name owners should make sure that their domain names are renewed before they expire.

    Domain name owners can also register with numerous secondary registration services that, with varying degrees of success, attempt to register recently expired domain names that have been deleted from the main Verisign catalog. However, the rules for this service may be about to change.

    In a recent development, Verisign has decided to provide a one-year "test" of a master secondary registration service for the dot-com and dot-net top-level domain names. While pending congressional action could derail this arrangement, ultimately, domain name owners may be left with a single system that permits them to "pre-register" for their own domain names under one unified system. This would further prevent third parties from obtaining domain names that original owners failed to properly renew. While it is too soon to determine the success of the new program, there is little else being done to reduce the number of unintentional domain name losses.