Limit the chances of receiving bogus legal threats with these helpful tips.
[Editor’s note: Bill Sweetman participated in a legal panel about domain names at TRAFFIC Las Vegas. He gave ten tips to help domain owners protect their domains from bogus legal threats. I asked him if he would turn his talk into an article for Domain Name Wire. I’ve split the tips into two separate posts.]
In a perfect world everyone is knowledgeable, honest, and has the best of intentions in regards to your valuable domain names. Sadly, we don’t live in that world, which means there are some bad actors out there – including some over-reaching trademark lawyers who should know better – that will pull some pretty underhanded stuff and use trumped-up ‘legal’ claims to bully and steal your generic domain names away from you. I’ve seen this kind of sneaky stuff attempted hundreds of times, and I’d like to help you and your domains avoid falling prey to this.
With that in mind, here are some simple, actionable steps you can take right now to reduce the risk of losing your domain names for the wrong reason. Please keep in mind that I am not a lawyer (I only play one on TV), the following is not legal advice, and if you think you are facing a genuine legal situation please seek help from a knowledgeable domain name lawyer such as Karen Bernstein, John Berryhill, Bret Fausett, Ari Goldberger, Zak Muscovitch, and Howard Neu.
1. Do not park your domain names
The parking companies are going to hate me for writing this, but I figured I might as well start with my most controversial tip. Personally, I don’t have a beef with parking, and I know lots of domain investors who are making a ton of money with parking. But if you want to significantly reduce the risk of inbound complaints (legitimate or otherwise) about your domain names, do not have PPC ads appearing on the landing page. Nothing gets other people hotter under the collar than seeing what they believe to be PPC ads targeting their industry or featuring their competitors. This doesn’t mean you or the parking companies are doing this intentionally, or are even aware that it is happening, but you will significantly reduce the level of nuisance complaints you get by nuking the parking. Put simply, you give the other side less ammunition to use against you. There have been many a UDRP where the ‘evidence’ of supposed bad behaviour includes printouts of pages of ads for X where the complainant went to a parked domain and did a search for X. Surprise surprise, a page of ads for X shows up. Of course anyone familiar with how search engines work realizes this is normal, non-infringing behaviour, but sadly many UDRP panelists and lawsuit judges do not. Don’t give folks the chance to accidentally or deliberately use the PPC ads on your parked domain as evidence against you, no matter how innocent you really are. Perception is everything. If you still want to park your domains, work with your parking company to lock the keywords to a generic theme or topic. Ideally, use a “for sale” lander with no ads on it instead. Whatever you do, make sure the domain does resolve, because a non-resolving domain can also freak out the other side and can hinder your ability to sell the domain. One more thing to watch out for is forwarding. Be very careful about forwarding a domain to another destination since it can be easy to lose track of where the domain is forwarding to and what is being displayed at the forwarded destination.
2. Make sure the WHOIS info is accurate
Another thing that riles the other side up is the inability to contact the domain owner to lodge their complaint, regardless of the legitimacy of the complaint. Don’t give the complainants the ability to claim that they tried to contact you via the WHOIS record and couldn’t get a response. “We tried to notify the domain owner of our concerns, your honour, but they ignored us so they must be a cybersquatter…” Make sure that all channels of contact in the WHOIS records work and are monitored by someone responsible and responsive.
3. Avoid using WHOIS privacy services
This is another thing that really rattles people who might have a beef about one of your domain names, especially because lots of actual cybersquatters hide behind WHOIS privacy services. You are perceived as being guilty by association, no matter how good a reason you have for using the WHOIS privacy service. Where possible, display your actual contact info. If you really need to use a WHOIS privacy service, make sure that the privacy service forwards emails (and ideally snail mail) to you. Not all of them do. At least that way you will know if someone has an issue with one of your domain names and will have time to respond. On a related topic, find out what your registrar’s policies are about handling complaints about their registrants’ domains. Will your registrar protect your rights (and your identity) or will they roll over at the slightest possible threat? I have heard of some registrars charging their clients hundreds of dollars if one of their clients’ domains gets hit with a UDRP complaint, even if the complaint is totally bogus. Make sure your registrar has your back.
4. Put your contact info on the domain’s landing page
You’d be amazed how many people, including otherwise intelligent lawyers, don’t know what a WHOIS search is. Make it easy for these folks to contact you if they have a concern about one of your domains. Put your company name, email, and other contact info on your domain’s landing page. This also can be used as evidence of you being a legitimate operation since, in effect; it proves you are not hiding from anyone. Don’t give anyone the excuse to say they had no way of reaching you to express a concern about one of your domain names.
5. Be careful how you handle inbound phone calls
Sorry to say, but sometimes that innocent sounding phone inquiry about purchasing your domain name is actually a sneaky fishing expedition trying to gather evidence of your supposed malfeasance. If someone phones you about one of your domain names, say very little other than to thank them for their call and request that they put their inquiry, whatever it is, in writing. And by writing I mean email, although if you really want to gather a paper trail you can ask for a fax or snail mail letter on their company letterhead. The goal here is to have a solid, time stamped paper trail of the communication that you can use to defend yourself in case things go bad.
Stay tuned for the next five simple tips to protect your domains from bogus legal threats…
Bill Sweetman is the President & Lead Ninja of Name Ninja, a boutique domain name consulting firm that helps companies acquire, manage, protect, and profit from their domain names. Name Ninja offers a suite of domain name consulting services for startups, entrepreneurs and marketers, corporate domain name owners, and new gTLD registries and operators.
Karen Bernstein says
Good tips, Bill. One thing I disagree with is about the phone calls. Why would you want to have your communications in writing? It seems to me that phone calls are safer since most jurisdictions in the US have special rules for recording conversations requiring consent from both parties before recording anything over the phone. If the bad actor/potential complainant says over the phone, “I’ll offer you $3 for the domain name” and the domain investor says, “I won’t sell unless you pay me $100,000,” there’s nothing in writing and then it becomes a matter of he said he said or he said she said. There’s nothing to peg anyone down with if none of the negotiations are in writing. Whenever I handle incoming inquiries for domain sales, I never put any prices in writing unless there is a solid NDA in place beforehand.
Mike says
Bill, interesting and I do hope you are please going to comment on the single best way of protecting ,and that is “Jurisdiction” ,i.e. Jurisdiction that you can use to defend against attack.
Larry says
Karen – I realize you are an attorney and an authority on this but I would add that I’ve seen attorneys file affidavits against someone for statements made over the phone. It’s up to the panel to give weight or not and of course someone can always just make something up but a contemporaneous record of a phone conversation does give one a leg to stand on. Especially if an attorney, an officer of the court, is the one making the statement.
Karen Bernstein says
Hi Larry, which do you think carries more weight, written proof or oral? To clarify, my position is that you don’t talk price AT ALL until an NDA is in place, especially if it involves premium domains.
Andrew Allemann says
Karen, I think in this case we’re talking about defending against someone who may want to make a cybersquatting claim.
If you get it in writing, it may be proof that they approached you and made an offer to you, not the other way around.
Karen Bernstein says
Andrew, I hear you. My point is that nothing be said without an NDA. Find out over the phone what the so-called buyer wants to do with the domain which gives you an idea of what you may be dealing with and when price comes up tell them you won’t discuss it unless there’s an NDA in place. It has been used successfully to filter people out.
Mory says
@karen – and how will an NDA protect you? So he goes to a UDRP even with an NDA. Do you put in a provision that if he breaks the NDA you get X compensation? Or goes to a UDRP you get X compensation? I mean, he will claim that the NDA isnt stronger than his TM being hurt by you using the domain. Would it stand in court?
David Z says
Looking forward to the next five tips!
John Berryhill says
“There have been many a UDRP where the ‘evidence’ of supposed bad behaviour includes printouts of pages of ads for X where the complainant went to a parked domain and did a search for X.”
Can you list those. Here are two…
—————
A. D. Banker & Company v. Domain Invest
Case No. D2010-1044
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1044
The Panel accepts the Respondent’s contention that the pages brought forward
to support these contentions are not pages that are taken from the landing
page operating for the Domain Name, but instead appear to be pages
generated as a result of specific searches undertaken from that page. The
link displayed may well link to competitors to the Complainant’s business.
However, if these links were generated not because of any association
with the Domain Name, but simply because of the nature of the search
request that the Complainant has independently chosen, then that is of
limited or no evidential value when it comes to assessing the Respondent
motivations for registration.
Franklin Mint Federal Credit Union v. GNO, Inc.
NAF Claim Number: FA0612000860527
http://domains.adrforum.com/domains/decisions/860527.htm
As noted above, Complainant’s “evidence” consists of Complainant’s own
manipulation of search results on the Respondent’s web page, and the
claim that Respondent intentionally placed those automatically generated
links on the web pages shown in Complainant’s exhibit 3. It is clear that
Complainant’s exhibit 3 carries notations indicating the manner in which
Complainant’s counsel generated this fictitious evidence; and further,
Complainant does not mention that the initial UDRP filing against this domain
name was withdrawn by Complainant so that it could add these recent
allegations.
—–
That is a fairly simple complainant tactic to overcome.
I’d like to know which “many” cases involving use of a search bar in this manner Bill is looking at – as in name a few.
Bill Sweetman says
@ John, my comment was more anecdotal in nature however I will say that several of the UDRP complaints that came across my desk in my last gig pivoted on this. The relative few that actually made it through to the full blown UDRP process are a matter of public record. Most were neutralized (by our counsel) before reaching that stage because, as previously noted, that is a weak foundation for a claim.
John Berryhill says
@Bill – understood. There are definite hazards with PPC, so it is difficult to have “one size fits all” recommendations. A generic or descriptive phrase targeted to relevant PPC subject matter is, however, a much safer posture than “general links” or non-use of the domain name. The problem with “general links” is that it is virtually guaranteed that one of the subjects will relate to an obscure mark from a jurisidiction that the registrant never heard of. Other problems include geo-targeting, in which the links shown on the page in some part of the world may differ from those seen by the registrant in their own jurisdiction (as in the elephant.com dispute); or keyword “spiking” by the complainant (as in the pig.com dispute). The Yummynames general approach to UDRP’s – file suit every time in the Mutual Jurisdiction – is not a realistic option for most domain registrants, though.
However, “what UDRP complainants often argue” and “what arguments prevail in a UDRP dispute” are often two different things.