As you move from a great idea to a growing company, one of the first things you must do - at the earliest possible stage - is protect the name of your company. The name is very important for marketing and branding purposes, and especially crucial for your website. A huge and irreparable mistake that many start-ups make is to start using a name for their company without first checking to see if the name is available as a domain name. Later, when they set up their web site, they learn that they cannot use the name. Meanwhile, they have spent valuable time and money on brochures and marketing material, branding, and awareness.
Today’s column shows you how to quickly and easily check your domain name for availability, how to register it, and how to set up an initial site - all for free. We also are pleased that Attorney Meir Dahan from the law offices of Dr. Mark Friedman has agreed to provide insights on Disputes Over Domain Names, and Cybersquatting – two issues you may have to contend with.
Checking and Registering Domain Names
You must check and register potential domain names for your new company at the outset. You can do so even before you have established your company. The best place to do this is at www.webjump.com. WebJump can register a new domain for you with InterNic with no charges beyond their standard name registration fee ($70).
Let's walk through the process together. Go to the site and under yourdomain.com, click on sign up. Now, click on create a new www.yoursite.com and then type in the potential domain name. In a minute or two, you will know if it is available or not. If it is available, you can register it immediately.
Setting Up Your First Site
Webjump is also a great place to set up your initial web site. The service will host up to 25MB of a Web site, and this is more than sufficient for a promotional site – even if you decide to use lots of graphics (not recommended). Unlike other low-cost hosts, WebJump does not impose a so-many-megabytes-per-month data transfer cap. WebJump also provides technical support via e-mail (24-hour turnaround time), and links to sites that can enhance your site. Best of all, there are no setup charges or monthly fees.
In exchange for this service, WebJump reserves the top inch of every page on your site for a frame full of advertising. If you can live with this, webjump is an excellent way for you to get your site up and running quickly and cost effectively.
Domain Name Disputes
Suppose you failed to register your domain name initially and then after realizing your mistake, tried to register it but it was already taken. You have already prepared brochures, packaging, done marketing and invested heavily in branding and good will. What can you do? Attorney Meir Dahan provides the following overview of case law regarding disputes over domain names.
The case law on domain names can be divided into two groups. The first involves "cyber-squatting" or domain name piracy, and the second arises out of the "first come, first served" principle. This principle is applied by the registries where one party has legitimately registered a domain name which is identical or similar to a registered trademark.
Cyber-squatters register domain names similar or identical to the trademark of another party with the intention of either selling/licensing them to the trademark owner or of using them for their own benefit for exploiting the goodwill of the particular company. The second category involves usage by the Registrant of the Domain Name which is identical or similar to a registered Trade Mark of a third party.
As far as cyber-squatters are concerned, the courts have held that in such cases the ownership of the domain name in dispute will be transferred to the trademark owner. For example, the US case Intermatic v. Toeppen and the UK case BT v. One In A Million, were both cases in which the cyber-squatters had registered more than 200 domain names with the obvious intention of reselling them and, as a result, the courts inferred bad faith on the part of the cyber-squatters.
As to the second category, the courts in the US and UK have held that the Domain Name Registrant has the right to maintain and use the domain name, unless such use infringes the trademark owner’s trademark rights. In such cases, unlike the cybersquatter cases above, the courts will examine carefully whether or not the Registrant is entitled to keep the domain name, and the starting point will be that it is the Registrant who has the right to use the name.
In order for the trademark owner to establish a case of trademark infringement, he will need to prove a likelihood of confusion, mistake or deception as a result of the non-authorized use of a registered trademark. Therefore the question arises whether consumer confusion, deception or mistake is likely as a result of the use by the Registrant of the domain name in question.
According to the general law, several factors should be weighed to determine if there is a likelihood of confusion. These include similarity of the marks, similarity of goods or services, the area and manner of use, degree of care likely to be exercised by consumers, strength of the mark, actual confusion, and the defendant's intent.
In cases where the trademark owner is unable to prove the required likelihood of confusion, he might attempt to rely on a claim of dilution. Dilution is a cause of action invented and reserved for a select class of marks - those marks with such powerful consumer association that even non-competing uses can impinge on their value. COCA COLA, MICROSOFT, KELLOGS and HEINZ are examples of such famous marks
In a recent decision in the UK case Avent Incorporated v. Isoact Ltd. (1998) FSR 16, the Court rejected the claim of a trademark owner to have the exclusive right to use its trademark as a domain name on the Internet, and held that the domain name owner has the right to keep and use it. The Court held that there was no trademark infringement because the parties provided different services and there could not be any confusion as a result of the defendant's use of the domain name. The court stated that "users of the Internet also know that that is a feature of the Internet and their search may produce an altogether wrong Web page or the like".
Next week we will cover patents, provisional patents, and other intellectual property issues that start-ups must contend with -again, at the earliest possible stage.
Published by Israel's Business Arena on October 26, 1999