By Donna Kanabay, RMR, RPR, CRR
Many thanks to Donna Kanabay and FCRA for publishing the following article:
Squatter’s Rights?
If you’re a member of the popular online gathering places for court reporters, such as Depoman, the NCRA page on LinkedIn, or the NCRA Owners/Managers listserv, you know Lisa Migliore Black, a popular (and outspoken) member of these groups. Last year, she posted that a <not-so-friendly> competitor had registered her (maiden) name for a web site, www.lisaMigliore.com, and the URL was redirecting people to their site.
It’s called Cybersquatting, and it’s becoming more and more of a problem as everybody continues to pin their lives, and their livelihoods, on the Internet.
The Nolo.com Web site (“Law for All”) defines cybersquatting as, “Registering, selling or using a domain name with the intent of profiting from the goodwill of someone else‘s trademark. It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses.” Nolo.com presents a short history. “The practice that‘s come to be known as cybersquatting originated at a time when most businesses were not savvy about the commercial opportunities on the Internet. Some entrepreneurial souls registered the names of well-known companies as domain names, with the intent of selling the names back to the companies when they finally woke up. Panasonic, Fry’s Electronics, Hertz and Avon were among the ‘victims’ of cybersquatters. Opportunities for cybersquatters are rapidly diminishing, because most businesses now know that nailing down domain names is a high priority.”
Lisa’s experience was a nightmare for any business owner. She filed a claim with the WIPO, World Intellectual Property Organization, the organization that governs intellectual property. The matter went to arbitration, and you can read about it here.
Among the defenses that the Respondent put forth:
- “Complainant lacks common law rights in her maiden name, as she has used her married name or business name in commerce since 2008 and not her maiden name as her commercial address.”
- “Respondent registered the disputed domain name for possible use for criticism of Complainant or as a “fact check site” regarding Complainant’s public statements.”
- “The free speech purpose of the disputed domain name demonstrates that Respondent did not register the disputed domain name in bad faith.”
- “The brief diversion to Respondent’s website was accidental. Respondent’s information technology (IT) is managed by a third party, which “[i]t is assumed . . . inadvertently” began the re-direction from the disputed domain name when told by Respondent to implement re-direction from other commercial websites that Respondent owned.”
The panel ruled in Lisa’s favor. “For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lisamigliore.com> be transferred to Complainant.”
It’s a good idea to trademark/register not only your actual name, but any possible variants of it. And then buy the rights to the domain names for all those possible permutations. (i.e., in addition to .com, register .org, .net, .biz, and .info.) For my Web site, www.kanabay.com, I might also want to register KanabayReporters, KanabayCourtReporters, KanabayCR, DonnaKanabay, and DonnaMKanabay. That’s pretty daunting, to think of all the possible ways your name can be, in effect, stolen, isn’t it?
From www.cybersquatting.com, a site devoted to this important issue, “Another startling fact is that the domain name registration system does not require domain name registrants to conduct any sort of trademark search before registering a domain name. As a result, in a matter of minutes, anyone can register (unlawfully, that is) domain names containing variations of any world-famous trademark imaginable. The large traffic in the direct navigation market, the race by business owners to obtain domain names to property identify their businesses, and the ability to register domain names without getting trademark clearance, have resulted in many disputes revolving around domain names and trademarks.” (Direct navigation is typing directly into the address field as opposed to using the browser’s Search field, for example, “cellphones.com,” “mp3.com,” and “videogames.com. Or, say, courtreporting.com.)
So the arbitration came out in Lisa’s favor, but what’s next? Lisa has filed for damages in Federal court.
The January 2013 issue of NCRA’s magazine contains an article by Lisa, herself, on pages 46 and 47: “Cybersquatting: Don’t Be A Victim or A Perpetrator.”
Even “big dogs” can lose. The Cybersquatting.com web site relates a recent case where Steinway, the famous piano manufacturers, lost their claim on the name “americansteinway.com.”
For more information about Lisa’s case, she blogs extensively about it on her web site.
Per the Cybersquatting site, it’s not necessary to actually register your business name as a trademark: “A trademark comes into existence as soon as a business starts using that trademark in commerce. While registering a trademark with the United States Patent & Trademark Office offers a trademark holder certain benefits, it is not necessary to establish rights in a trademark.”
The legal areas of trademarks, copyright, domain names, etc., can be very complex, and so it’s a good idea to consult with an attorney who is well-versed in these issues to learn how best to protect yourself – or how to go after somebody who’s “stolen” your name. For now, I’ll be watching Lisa’s federal case closely!
About the Author: Donna Kanabay, RMR, RPR, CRR, is the owner of Kanabay Court Reporters, an independently owned, full-service court reporting firm proudly serving the Tampa Bay, Florida area. Donna is a member and volunteer for the Florida Court Reporters Association.
Lisa Migliore Black, Migliore & Associates, Louisville Court Reporting and Video Services. All Rights Reserved.