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Protecting Your Organization from Trademark Infringement

In general when someone registers a domain with no knowledge of trademark law they will do nothing with it (i.e., it will sit empty).  Mostly it’s just baiting for an auction or a scam and you likely find that the domain and scam e-mail senders no longer exist.  It takes a long time to build a company, website and a brand.  No one would likely attempt to do so knowing that they are in violation of a trademark.

If by some far off chance, however, they set up a ranking site on the domain you could drop them a form letter threatening legal action.

If (in that scenario), the domain registration is not cancelled within a timely manner you can then use a service like the National Arbitration Forum:

https://www.adrforum.com/domain-dispute

The cost at the time this article was written was $1300 for a single panel review which can be submitted online.

https://www.adrforum.com/arbitration/filing/home

If the dispute is for multiple domains against the same registrar then you can do up to 5 for the same cost.

You could follow up in a local court for damages (ie, the cost of the arbitration,etc…).

 

ICANN has a service that costs $150 annually.  This service keeps you apprised of all domains possibly registered in bad faith.

http://trademark-clearinghouse.com/content/what-clearinghouse

Their Sunrise Service gives sends you a notification when new domains become available so that you can “Secure the Domain” which I think means “purchase it”.  This appears to apply to new gTLDs (ie, .info, .us) so I think it would be of more concern to large companies with an international presence and a large budget for trademark protection.  I think it is included with the Clearing House fee of $150 at this time.


For the most part you shouldn't worry about trying to purchase up every domain that has your brand in it.  Do keep aware of different results that come up in competition with your specific site and if there are true violations of your trademark (ie, a published site that is almost the same name) then you can take the actions noted above and/or legal action.

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