What's in a name? - Black Enterprise

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Black Enterprise Magazine September/October 2018 Issue

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You finally branded yourself on the Web. You did the usual search to see if someone else had a domain name identical to the one you wanted to register. No problem. The name is yours to buy. Business is booming, when suddenly you get a letter from someone on the other side of the country saying you stole their company’s trademarked name.

Online retail titan Amazon.com was sued by Amazon Books, a small California bookstore that had been operating under the name Amazon for years, long before the Website went online. The two parties settled out of court, with Amazon.com essentially having to get a license from the local retailer in order to hold on to its brand name.

BET Inc. sent a New Jersey teen, Aaron Doades, a cease-and-desist letter for trademark violations when he registered his Website as Rapcity.com. The Washington, D.C., cable channel had an afternoon music show of the same name. Doades, who alleges he wrote a letter requesting permission to use Rapcity.com as his URL but with the understanding he would call his site the Hood, is now suing the company for shutting down his site.

The problem lies in that domain name registries such as NSI will only confirm that no one else has registered the URL you requested. They don’t tell you if the name’s trademarked. How can you avoid infringing on someone else’s business name? On the other hand, do you have any recourse if someone has bought the domain name for your trademark and is holding it for ransom?

Recent legislation has made it possible for you to protect your trademark and your personal name from “cybersquatters”-people who register Web addresses for trademarked names, or anybody’s name, and then try to sell them for huge profits. “Cybersquatting is now recognized as a violation of federal law,” says Brandon Schmid, an attorney at Perkins Coie L.L.P. in Seattle. “On November 29, 1999, the Anti-cybersquatting Consumer Protection Act went into effect,” says Schmid. The law mandates up to $100,000 in penalties for “cybersquatters.” Under the law, you can’t, in bad faith, register someone else’s trademark or his/her personal name-or a confusingly similar mark or personal name-as a domain name. “The complainant needs to prove bad faith,” says Schmid.

If, by chance, your business has the same name as another company or you have the same name as a famous person, you have a better chance of proving you didn’t register the domain name in bad faith (or basically to hold it for ransom), explains Schmid. Some disputes can be solved with letter writing, but there are formal resolution proceedings (Mandatory Administrative Proceedings or MAPs) through ICANN (Internet Corporation for Assigned Names and Numbers) that can be instituted.

Trademark holders can go to ICANN (www.icann.org) for arbitration in settling disputes about domain names. Still, if either party is dissatisfied with ICANN’s decision, they can file a civil suit against one another for trademark violations. If you do have a problem, Schmid says, “You’re really going to want a trademark

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