Many people probably don’t even realize they have intellectual property rights… much less how to protect them! Protecting your intellectual property rights is a 21st Century dilemma that potentially affects anyone who owns a web domain. On the surface, it may seem quite daunting – just one more thing to worry with in the world of business today. I would venture to guess that most people who enter into a business on the World Wide Web never even consider the possibility that there could be “intellectual property” to protect.
A quick perusal of WIPO cases at http://www.wipo.int/amc/en/domains/cases/all.html will give one an idea of the scope and magnitude of these new business challenges.
As an example, look at Case No. D2007-0006 – Elite Licensing Company S.A. and Elite Model Management v. Balalaika Ltd. The complainant charged that the URL “elitemodelworld.com” was “confusingly similar” to the URL “elitemodel-world.com” – citing that the second URL was “corresponding to what is perhaps the most famous international web sites in the field of model agencies.” The URL in dispute represented a website “which proposes enrollment to both male and female models’, who can then sell their services to clients for both nude photos’ or movies.'” The decision stated that “the Panel orders that the domain name – ‘elitemodelworld.com’ – be transferred to the Complainant Elite Model Management of Paris, France.”
Think you want to “bash” a competitor or a business that has irritated or insulted you? Think you will create a website, as in “thiscompanysucks.com”? Better read some of the WIPO decisions first. A case in point is Case No. D2007-0014, in which an individual registered “airfrancestinks.com”. A similar case was heard for “airfrancesucks.com” (WIPO Case No. 2005-0168). In both instances, the URLs were deemed “confusingly similar,” with no rights or legitimate interests in the subject name (Air France), and that the subject name was being used “in bad faith.” In both cases, the URL was transferred to the Complainant.
A quick perusal of Case No. 2007-0022 will introduce you to a new term “typosquatting”. In this case, 100 derivations and misspellings of the insurance giant Blue Cross Blue Shield were in question. The decision states that “The Complainant claims that the Respondent has registered and used the disputed domain names in bad faith, to free ride off the fame of the Complainant’s marks. It states that it is inconceivable that the Respondent was unaware of its famous marks.”
These are just three of hundreds of complaints that are mediated each year by the WIPO court. Because it is so easy to vary the spelling of a URL and start a website, and because it can be so costly to dispute these violations in the WIPO court, a lot of people are willing to take a chance. The fee to fill a WIPO dispute is a minimum $1000, and “mediator’s fees” are $300-$600 per hour; $1,500 – $3,500 per day. This does not include attorney fees, if you have secured the services of someone who specializes in Intellectual Property, and it is my experience that a successful result in such a dispute would be difficult without these services.
My husband and I had an experience with WIPO, the World Intellectual Property Organization, in 2000-2001. In fact, ours was one of the first 1,000 cases heard by the United Nations’ World Intellectual Property Organization and Mediation Center in Geneva, Switzerland. At that time, we were publishers of a magazine for a niche market. We had started this business in 1987, and we coined a name for our magazine and our target audience and trademarked that name, the logo, and a URL that included the name. If you have ever applied for a trademark, you understand that the process is time consuming and expensive, and every detail has to be exactly correct. Along with our trademarks, we had purchased and registered domains for our business name with extensions .com, .net, and .org
In the year 2000, it came to our attention that some of our customers were confused when searching for our website. The most common complaint we heard was, “I went to your website, and it wasn’t there,” or “I went to your website and got xxx instead.” Upon further investigation, we learned that one of our customers/advertisers had registered seven domains with “confusingly similar” spellings of our business name. This meant that a misspelling by one letter in a URL could possibly direct our customers to this advertiser’s website instead. The ramifications of this long-term were enough of a concern for us to secure legal help and start the process to fight this with WIPO, utilizing an attorney who specialized in intellectual property – at that time a very new frontier, legally.
The process was lengthy and quite expensive. I would estimate it cost us $10,000 to procure the seven URLs in question, but in the end, we were successful, and the URLs were transferred to our ownership. During this time period, another advertiser registered a variation of our domain with the .ws extension. We again filed a complaint, and by the time the case was heard about a year later, the ruling was that, while the name usage was “confusingly similar,” it appeared that the usage of this name had become “generally descriptive” meaning it was a readily recognized term, like “Kleenex” for tissues and “Xerox” for photocopies. So we didn’t lose, but we didn’t win, either. And ultimately, the advertiser signed the URL over to us at a later date, saying there had been a misunderstanding. It seems that someone in her employ had registered the domain without her full knowledge and understanding of his intentions, and once she realized the ramifications, she surrendered ownership of the URL. But again, this process was very expensive.
So what did we learn from this? We learned that domain registrations are very inexpensive compared to court costs. We acquired a premium membership with a reputable domain registration company and registered every derivation of our business name – and anything remotely connected – that we could. In essence, we learned that “the best defense is a good offense,” and we went on the offensive. We clearly stated in all materials related to our business that any use of our business name in a URL in any manner was illegal. Some advertisers had unknowingly violated the law by using our business name in the directory portion of their URL, i.e. www.buythisproduct.com/smithandjones. In a few instances, we compromised and allowed a reputable and longstanding advertiser to use this directory extension, WITH THE DISCLAIMER in their ads and any other materials where the URL appeared that stated we had granted said permission. And, I will have to say, there are probably many who venture into the world of e-commerce and websites who honestly do not realize that they are violating anything by creating a “confusingly similar” URL. Many probably assume this is just “free enterprise” at its best! Sometimes, a civil, courteous dialog between both parties can result in a successful resolution without mediation. Unfortunately, our attempts to resolve our disputes amicably without mediation did not have a successful outcome.
Additionally, we had a couple of websites who were publishing information verbatim from OUR website. In one case, the parties involved didn’t even go to the trouble to change the font and type color/size. They copied from more than one site, and the original typeface was intact for each of the particular original sites, so it was obvious that they were “copy/pasting”! Cease and desist letters from an attorney mentioning court and fines put a stop to one site. Notification of these violations to a company who carried advertising for another website was also useful – the company refused to take additional ads from this website, and that was virtually the beginning of the end for their business.
The bottom line is that it takes very little time to sit at a computer and register domain names. You need a credit card and a few hours, at best. Fighting an infringement on your intellectual property could take years and thousands of dollars. We developed two distinct strategies for protecting our intellectual property:
*Register any and all domains that were remotely similar to our name/business concept and “park” them with a redirect to our primary domains; and
*Stay on your toes and be the best you can be.
We tried to make our website relevant, keep the quality of the material high, and ensure that our functionality was second to none, and by doing so, “competition” could not touch us! Rather than focus on fighting the others, we focused on being the best WE could be at what we did. It may sound simplistic and a little bit “Pollyanna,” but it worked!
While there are those who will totally ignore any copyrights, be sure you post a copyright statement on your website… preferably on every page. This will be enough to intimidate some would-be copycats, and it will be one more piece of leverage should you enter into a dispute… another way to “cross your T’s and dot your I’s!” I include a copyright statement with articles I write and send via e-mail or post on my blogs. It may not matter to some, but hopefully most will realize that these are MY words and copying them is unacceptable – and even illegal!
The 21st century has brought wonderful new technology, but along with that, the rules of “the game” have changed. The key to succeeding and protecting your property, intellectual or otherwise, is to stay awake and alert, and focus on being the best in the business.