How can I make sure I won't get sued for cybersquatting?
March 21, 2013 10:19 AM Subscribe
This is a little tricky to talk about without specifically mentioning my domain name, but I'll try.
I have a popular website that's about to get significantly more popular, because I'm about to publish a book, go on book tours, etc.
There's a *much* more popular website that's been around since the beginning of the web, and part of my domain name includes their domain name (for example, suppose their domain was Narnia.com, and my domain was AdventuresinNarnia.com). We're in the same general market (say Narnia.com sold video games, and I reviewed video games).
What legal risk am I subjecting myself to, particularly if I have absolutely no desire/intent to sell my domain name? I have a PR4 site and I don't want to move, but I don't want to put links to my website in a published book and then get forced to move later.
Response by poster: Yeah, I'm aware; I'm just completely broke at the moment. I'm trying to get a general sense of the legal landscape before making a decision to move my domain or talk to a lawyer.
posted by anonymoose at 10:24 AM on March 21, 2013
posted by anonymoose at 10:24 AM on March 21, 2013
Nthing the 'talk to a lawyer' bit - but before that, do your research on Narnia. Are they the sort to sue the daylight out of people? Have they aggressively dealt with other cybersquatters, whether real or perceived? So long as you're not trying to confuse people, and so long as you're not taking money out of their pockets, you'll probably skate under the radar. Assuming these guys have eyes on the rest of the web, they know where you are and who you are. You'll probably be ok... but talk to a lawyer just in case.
posted by chrisinseoul at 10:24 AM on March 21, 2013
posted by chrisinseoul at 10:24 AM on March 21, 2013
Not a lawyer, not your lawyer. You should also find out if they have a service mark or trademark (or application, even) for Narnia. The relationship between trademarks and domains is complicated at best, but that's valuable information to have.
I'd also document how long you've had your domain or been using your domain name; in normal trademark law, lack of enforcement of a trademark weakens the trademark owner's case.
posted by punchtothehead at 10:28 AM on March 21, 2013
I'd also document how long you've had your domain or been using your domain name; in normal trademark law, lack of enforcement of a trademark weakens the trademark owner's case.
posted by punchtothehead at 10:28 AM on March 21, 2013
Response by poster: Good suggestion. Some random company I've never heard of owns a trademark to Narnia in a totally unrelated market.
posted by anonymoose at 10:32 AM on March 21, 2013
posted by anonymoose at 10:32 AM on March 21, 2013
You can be sued for anything. If they get a bee in their bonnet and decide to throw their full legal resources at you there's nothing you can do about it.
Also, yeah talk to a lawyer.
posted by humboldt32 at 10:33 AM on March 21, 2013 [1 favorite]
Also, yeah talk to a lawyer.
posted by humboldt32 at 10:33 AM on March 21, 2013 [1 favorite]
To be safe, why don't you get a second, unrelated name and 1) use that in your book, 2) start redirecting traffic from your old site to this one informing your reader of the change. (You don't need to change your current's site content, just have it set up to be reachable by two names.)
posted by aroberge at 10:37 AM on March 21, 2013 [4 favorites]
posted by aroberge at 10:37 AM on March 21, 2013 [4 favorites]
IANYL, TINLA
A lot of this depends on very fact specific things. Does the more popular website have a trademark registration? Even if they don't, they still have rights they can enforce - but a tm registration tends to show they're more serious about policing those rights. Who has been using the name longer? Why did you pick the name you picked?
What is the name? A generic name or a descriptive name is less protected than a random, arbitrary, or "fanciful" name.
What country are you in? What country are they in?
You should familiarize yourself with the UDRP.
The three main items the larger website (complainant) would have to show to win a UDRP proceeding are:
1) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2) The registrant (you in this case) does not have any rights or legitimate interests in the domain name; and
3) The registrant registered the domain name and is using it in "bad faith".
While the UDRP is a common way for companies to bring claims for cybersquating, it is not the only remedy available. You need to talk to an attorney that will be able to give you fact specific advice. If you need recommendations, I know a lot of people working in this area and will be happy to provide some.
posted by Arbac at 10:41 AM on March 21, 2013 [1 favorite]
A lot of this depends on very fact specific things. Does the more popular website have a trademark registration? Even if they don't, they still have rights they can enforce - but a tm registration tends to show they're more serious about policing those rights. Who has been using the name longer? Why did you pick the name you picked?
What is the name? A generic name or a descriptive name is less protected than a random, arbitrary, or "fanciful" name.
What country are you in? What country are they in?
You should familiarize yourself with the UDRP.
The three main items the larger website (complainant) would have to show to win a UDRP proceeding are:
1) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2) The registrant (you in this case) does not have any rights or legitimate interests in the domain name; and
3) The registrant registered the domain name and is using it in "bad faith".
While the UDRP is a common way for companies to bring claims for cybersquating, it is not the only remedy available. You need to talk to an attorney that will be able to give you fact specific advice. If you need recommendations, I know a lot of people working in this area and will be happy to provide some.
posted by Arbac at 10:41 AM on March 21, 2013 [1 favorite]
Seconding aroberge's suggestion. Get a domain name that is yourfirstnamelastname.com or some variation. For now, point it to redirect to yourcurrentdomain.com. In the future, you can change the destination in case you lose your current domain, or possibly develop yourfirstnamelastname.com as a destination itself (say, if you publish more than one book eventually it can have information on all of them, link to the book-specific websites, etc.)
posted by mikepop at 10:42 AM on March 21, 2013 [1 favorite]
posted by mikepop at 10:42 AM on March 21, 2013 [1 favorite]
Are you self-publishing? If you're with a traditional publisher, I would talk to your contact point there and get them to set up an appointment with one of their lawyers - they have an interest in avoiding a lawsuit as well, here.
But yeah, the UDRP will be the most common test, as Arbac said. After that it's generally regular trademark infringement.
posted by Lemurrhea at 12:23 PM on March 21, 2013
But yeah, the UDRP will be the most common test, as Arbac said. After that it's generally regular trademark infringement.
posted by Lemurrhea at 12:23 PM on March 21, 2013
I agree that a safe thing to do would be to get a second domain for the book and run your site under both domains. However you may have the same problem with the new domain from a different company. The saga of Katie.com is one story you should look at, as well as Dan's Domain Site.
Perhaps you can talk directly to the site owner (not his lawyer) and explain your situation, that you've been using your domain name and you've never heard of any problems related to the common portion of the name. Tell them while you feel it's ok to continue using it and expand its use in a book, you've been getting a bit freaked out from people relating domain name dispute horror stories. Ask for a letter that it is cool with them for you to continue using your domain. Offer to post a link to their site.
Lastly, don't do a similar thing with your cover art.
posted by Sophont at 12:39 PM on March 21, 2013 [1 favorite]
Perhaps you can talk directly to the site owner (not his lawyer) and explain your situation, that you've been using your domain name and you've never heard of any problems related to the common portion of the name. Tell them while you feel it's ok to continue using it and expand its use in a book, you've been getting a bit freaked out from people relating domain name dispute horror stories. Ask for a letter that it is cool with them for you to continue using your domain. Offer to post a link to their site.
Lastly, don't do a similar thing with your cover art.
posted by Sophont at 12:39 PM on March 21, 2013 [1 favorite]
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I mean, I hope that counts as an actual good answer, because that's what you should do.
posted by emptythought at 10:21 AM on March 21, 2013 [11 favorites]