There’s an instinct within most us that prompts us to lie or state the most ludicrous things when accused of being in the wrong. This primordial feeling (which may be what helped us survive) of justifying and rationalizing one’s actions is most evident in negotiations with trademark infringers and domain squatters (someone who registers a domain name with the intent to profit from the goodwill of a trademark belonging to someone else). While there are judicial fora to retrieve domains like the National Arbitration Forum for .com domains and the .IN Registry for .in domains (discussed in detail here) domain disputes don’t always go through them. On many occasions, the squatter is just sent a nicely worded cease and desist notice to stop using the domain and to transfer it to the rightful owner and negotiations ensue.

During the negotiations, the responses I’ve heard from domain squatters have ranged from those steeped in misconceptions to some incredibly clever responses to try and get money from the rightful owner of the trademark/domain. I have listed out some of the more common ones that I’ve encountered below:

You have a .com domain but mine is a .in/co.in so it’s very different

This is probably the first line of defense that comes up with people who are unaware of the law. If puma.com has been registered for shoes etc, registering puma.in also for shoes or anything related, is definitely going to get you into trouble from the owner. Whether the domain is a country level domain (.in for India, .au for Australia etc) in comparison to a top level domain, if the domain is identical or deceptively similar (puna, pumaa, pooma) legally the squatter is on very shaky ground.

Yours is a trademark, mine is a domain

I’ve had people telling me, with great bravado, that it didn’t matter to them where my client’s trademarks were registered or if they were registered at all for that matter since their domain (although identical in spelling) had nothing to the with a trademark. Sometimes in the most magnanimous tone, I’ve even been told that they have not and will not file any trademark application so there shouldn’t be a problem. The fundamental flaw in this line of argument, (also misconceived) is that a trademark is name or something that distinguishes you in trade. So if someone incorporates a word which has come to be associated with one particular business, if it is represented on a signboard or as domain name, it still affects the trademark rights of the owner.

There are so many others using a similar domain

I’m not entirely sure about the global prevalence of this line of thought, but in India, regrettably it’s thrown about more often than not. On many an occasion I’ve been sent an email in response to the cease and desist that I mentioned above with a list of domains that are similar to the squatters and ultimately the trademark holders. In such circumstances, a considerable amount of time is spent on educating them that a) just because someone else is doing something wrong doesn’t mean it makes what you did right, b) Just because the others are around doesn’t mean the owner won’t take action against them or c) Great, now I know who else is out there infringing! Thanks for the heads up!

I’ve spent so much money on putting up the website….. Er, So… Umm.. I ought to be paid something

Once the initial arguments on how the squatters actions weren’t wrong have been successfully negated through a bit of legal education, the next immediate defence and argument is on whether the domain has to be transferred back to the owner for some consideration. In most cases, this is done, trying to capitalize on a sob story of how the squatter, spent a considerable amount of money (always considerable and always in the currency of the trademark holder) to develop the website. At this point, the threat of legal action to ensure of the transfer of the domain without cost is the common rebuttal, or on occasion, calling the bluff (my personal favourite). I was once told by a squatter that he had paid a website designer over 7000 dollars to develop the website from scratch and an equal amount to a content writer. Calling that bluff was rather easy as he hadn’t removed the ‘not quite so’ inconspicuous bar at the bottom stating “Powered by WordPress. Built on ____ Theme.” and numerous paragraphs in Latin which were a part of the template. So much for the web designer and the content writer!

I know this domain is of value to you, but a lot of people have approached me to buy the domain – I may sell it to them.

On occasion, squatters who believe that they’ve done a great job by complying with a trademark holders demands, tend to think they deserve a certain amount of money for doing the nice thing. If they are turned down by the trademark holder, some veiled and some open threats follow. Unfortunately threatening the trademark holder along those lines, makes very good evidence of bad faith if the matter ever goes to Court or Arbitration.

If the trademark owner doesn’t have the patience to go through the negotiation process or it isn’t getting anywhere, using the Uniform Domain-Name Dispute-Resolution Policy (UDRP) or .IN Domain Dispute Resolution Policy (INDRP) as the case may be is always a great way to recover a domain.

With the Internet and technology constantly evolving, and newer top level domains coming into existence, more and more problems arise as well. Businesses have to be vigilant in protecting their intellectual property to retain a competitive edge. Domain disputes like any other dispute is subjective and each has to be dealt with a different strategy. With the right strategy though, protecting intellectual property can be easy and incredibly beneficial.

This article has been authored by Navarre Roy, an IP Law practitioner.