This is a true story (well…..kind of…names have been changed to protect the guilty).
I am a technology junkie. Unfortunately, my addiction to technology led me to buy a first release dishwasher from X. The dishwasher stopped working the day after the warranty expired.
Sure, I should have purchased a longer warranty. Sure, I should have bought a proven dishwasher. Sure, I kicked myself over and over.
I looked for X’s customer service number. I wanted to make sure that I called a repairman who had the training and know-how to work on the dishwasher. It took me at least 20 minutes to find a number for X; when I called that number, it took at least 30 minutes to reach the correct department. When I finally reached the right person, he chastised me for not buying the extended warranty. Then, I was given the contact information for three repairmen who were trained on my dishwasher. The first two had gone out of business. When I finally got a hold of the third one, he had to schedule me a week out. I was flustered.
When the repairman showed up, he had no idea what was wrong with my dishwasher. He indicated that he would consult with X and come back the following week. When he came back, he didn’t have the right parts and, he would have to order them from X. Of course, for whatever reason, X could not overnight my parts. It would be another week and a half before the repairman would receive the needed parts from X. When the repairman showed up again, the parts he ordered did not fix the dishwasher. This cycle went on for the next six months. Sure, a smarter person would have just bought a new dishwasher.
At the first month mark, I felt more than just flustered: X could not get parts out to the repairman quickly; and the repairman who was certified by X, but could not fix my dishwasher. I needed to vent.
I Googled “X customer service” to find an email or snail mail address were I could send my complaints. To my surprise, GoDaddy® popped up telling me that the domain “xcustomerservice.com” was for sale for a low, low price. And, so my blogging career started.
I used this venue to catalog my experience with X, and encouraged others to share their experiences. I even used X’s logo on my website. Subconsciously, I was daring X to sue me so that I could tell the world about its defective product and its worse customer service.
What could X do to stop me? X did not register the domain name I used which incorporated X’s name, and I was clearly using X’s name and logo to draw consumers to my site.
X could have litigated the issue. Courts and judges have the authority to award control and ownership over domain names (just as they have authority to award control and ownership over any other property). If the action was based on trademark law, X would have to prove that consumers would confuse the product/services I was selling with those products/services that X was selling; that there was a “likelihood of confusion”.
X could have brought action based on Anti-cybersquatting Consumer Protection Act (the “Act”). Theoretically, the Act made it easier for registered trademark owners to take over domain names that are confusingly similar the registered trademarks. Under the Act, X would have to establish that I acted in bad faith. A court would consider the following factors to make a finding of bad faith:
- Does the domain name holder have trademark rights in the domain name?
- Is the domain name the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person?
- Has the domain name holder made use (prior to the dispute) of the domain name in connection with a bona fide sale of goods or services?
- Is the domain name holder using the mark in a bona fide noncommercial or fair use way at a web site accessible at the domain name?
- Is the domain name holder attempting to divert consumers from the trademark owner’s web site in a confusing way, either for commercial gain or in an attempt to tarnish or disparage the trademark mark?
- Has the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?
- Has the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?
- Did the domain name holder provide false information when applying for the registration of the domain name (or do so in connection with other domain names)?
- Has the domain name holder registered domain names of other parties’ trademarks?
- How distinctive and famous is the trademark owner’s trademark?
X could sue me under the theory of slander/defamation. Truth is the defense.
Courts are notoriously slow and expensive. I’m sure X would want to put a gag on my blog quickly and cheaply – before I could do any more damage to X.
Alternatively, X could bring action under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) created by ICANN and used by all accredited registrars. Under UDRP, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name. A trademark holder will win under UDNDR only if ICANN found the following three factors to be true:
- that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
- that the party that registered the domain name has no legitimate right or interest in the domain name; and
- that the domain name was registered and used in bad faith.
X could show that I had no legitimate right or interest in the domain name by showing that I:
- registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out of pocket costs;
- engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner;
- registered the domain name primarily to disrupt the business of a competitor; or
- attempted to attract users to a web site for commercial gain by creating a likelihood of confusion with X’s trademark.
The lesson to be learned here? Have good customer service or, at least, buy domain names that have words that your customer will search for like: YourNameCustomerService and YourNameSucks. It is nearly impossible to buy all the domain names that have YourName in it. However, with a little planning, you can figure out the most important ones.
How did my story end? Well, X gave me a new dishwasher and that domain name…let’s just say it now belongs to its rightful owner.