Another lawsuit shows that domain names are important intellectual property.

I’ve written numerous times about web design companies holding a client’s domain name hostage. Here’s another cautionary tale about domain name ownership.

A Florida company called StableTracker.com, Inc says that its former outsourced tech team has stolen its intellectual property and its domain name (pdf).

StableTracker.com, Inc. says it contracted with the (now) defendants to perform a number of technical tasks including registering its domain name. But the defendant in charge of registering the domain name registered it in his personal name.

After the business relationship went sour, the company claims the defendants stole the intellectual property including software code and domain name. To make matters worse, it alleges that one of the defendants sent an email to an important business partner from StableTracker.com’s email account — using the email alias of the company founder and plaintiff.

Remember, if you control the domain name you control the email.

I think many people overlook how your domain name is an important piece of intellectual property. Make sure you own it.

UDRP was a waste of time and money.

Here’s another example of a UDRP case that should have never been filed.

A social media marketing firm that apparently just came into existence (or at least started using its brand) in 2010 filed a case against the owner of a domain registered in 2001.

Somedia Solutions, Inc., represented by Kurt D. Olender of OlenderFeldman LLP, filed the case against the owner of Somedia.com.

The complainant uses the domain name SomediaSolutions.com. It has a registered trademark for Somedia Solutions with a first use in commerce date of 2010 and a pending application for Somedia by itself.

It’s kind of funny that a company based on Facebook and Twitter marketing, which weren’t even a figment in someone’s imagination back when this domain was registered, would think they have rights to it.

Or it would be funny if it weren’t for both the complainant and respondent lawyering up for the case. Unless it was a lawyer friend, this was a costly affair for a case that should have never been filed.

Panelist Karl V. Fink found against Somedia Solutions but ignored the question of reverse domain name hijacking.

Three month window means lots of companies will apply for .brand under pressure.

It may have been Google that made in mainstream.

It’s the idea of a closed beta. Remember clamoring for a Gmail invite? Or perhaps begging for an invite to Google Wave, which you had no idea what the heck it was? Now Google+?

A similar thing is going on with new top level domain names, especially for .brand domain names. But this time it’s time based, like saying if you don’t sign up for Google+ today then you may not be able to sign up for it for five years.

Companies have a three month window to apply for their own .brand domain name. After that they might never get a chance again, and certainly won’t anytime soon.

This creates a sort of artificial time-based scarcity that will spur brands to apply for new TLDs. I expect hundreds to pay the money for a .brand TLD.

They will fall into three camps:

1. Companies that have an idea how they’ll use the .brand TLD.

2. Companies that are registering for defensive reasons because they aren’t fully protected by TLD protections (e.g. Apple or ATT).

3. Companies that have no idea how or if they’ll use the .brand TLD, but realize if they miss this window they lose the opportunity.

I suspect the third category will be the largest contingent, followed by the second and then the first (companies that actually know what they want the TLD for now). If the window for .brand TLDs was ongoing, most companies would sit on the sidelines and watch what their competitors do.

Neustar’s new “Brand Assurance” program is targeted at people in groups two and three.

Like the car salesman says…if you don’t act now this car will be gone tomorrow.

A dormant .brand domain for $10,000 a year (plus ICANN fees).

Domain name registry Neustar has created a new package for companies wishing to get their own .brand top level domain names.

Called the “Brand Assurance Package” (pdf), it’s a bare bones solution that seems to be geared to companies that may want to get a .brand but have no idea if they’ll ever do anything with it.

For $10,000 a year, Neustar guarantees companies will “meet ICANN specifications for your brand gTLD”.

That basically means they’ll help you with the initial application and make sure you meet ICANN’s ongoing technical compliance hurdles such as having an operating whois.

Of course this doesn’t include ICANN’s fees including the $185,000 application fee and ongoing annual fees. If the brand actually wants to use the domain name it can upgrade its package with Neustar.

This seems like a smart marketing move to get .brand domain names locked in and then upgrade them later.

Panelist respects the limited scope of UDRP.

The UDRP, a quick and inexpensive dispute resolution policy for cybersquatting, is limited in scope. But over time some panelists have tried to make it more of a court, bending the lines to find in favor of complainants even when it’s not a clear-cut case of cybersquatting.

Which is why I find William R. Towns’ decision in a recent case so refreshing.

Ticket Software LLC, which operates a site at TicketNetwork.com, filed a complaint to get TicketSNetwork.com.

I’ll let these lines from Towns’ decision in favor of the respondent speak for themselves:

…where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest…But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark

…In addition, the TICKETNETWORK mark when used with the Complainant’s online ticket exchange service does not have a high degree of inherent distinctiveness, and to some degree might be considered descriptive in relation to that business. The Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.

…And while the Respondent is using the disputed domain name to attract Internet users to a website with advertising links to online ticket providers, this is not inconsistent with the use of the disputed domain name in a descriptive sense

…it is paramount that panels decide cases based on the very limited scope of the Policy. Id. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.

Thank you, Mr. Towns.