I am about to register my first domain name consisting of my fairly common name (say, "Eugene") for my personal work-related blog. I found several acceptable options, but I am somewhat uncertain about the future availability of the chosen domain.

If I register either a new fancy TLD, say eugene.consulting or one with a country-code, say eugene.us, am I always secure to hold the domain name provided I renew it on time?

My concern is whether a company called Eugene possibly existing in the given country or elsewhere can challenge my domain name?

In other words, do I have any grounds to be worried of future squatting accusations or whatnot?

  • 2
    Related - Microsoft vs. Mike Rowe Soft – BruceWayne Dec 6 at 22:13
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    Don't search to see if your domain name is available until you are ready to register it with credit card in hand. Such searches are public and unscrupulous people will register it out from under you. (Don't ask how I know that. ;-) – Mike Waters Dec 7 at 0:20
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    @MikeWaters this hugely depend on where you are searching. If you do that from a reputable registrar, I doubt that the domain will be registered from under you... If you do it anywhere, then you have the risk attached to the tool you used. – Patrick Mevzek Dec 7 at 16:41
up vote 4 down vote accepted

Your question is relevant but has mostly not definitive long standing answer in either way. Nothing is eternal: registries can change and eligibility rules can change. Policies on dispute and trademark infringements can change too.

First you need to divide the world among gTLDs vs ccTLDs and making sure to take into account edge cases, like .tv or .co which are administratively ccTLDs but being run and marketed as gTLDs.

All gTLDs are governed by ICANN rules and policies. You can see the list of those policies at: https://www.icann.org/resources/pages/dns-2014-03-19-en

Among those you have the UDRP (and URS for newer gTLDs) that basically provides a first step out of court mechanism for trademark owners to dispute some domain names.

This is mostly stable for now, the specific points in the policy to define if a domain is infringing a trademark have not changed. This is of course extra to any procedure in front of a court, which can happen in any TLD.

With UDRPs it also happen that there are attempts of "reverse hijacking": entities claming to have a trademark, that was in fact registered after the domain name in an attempt in fact to get back the domain name. Sometimes this is spotted, sometimes not. Have a look at http://www.circleid.com/posts/20161020_understanding_reverse_domain_name_hijacking_under_udrp/ for examples on this.

Often, gTLDs are more open than ccTLDs: ccTLDs often put restrictions on who can apply for a domain name based either (typically) on the registrant citizenship or place of residence (that must be inside the country related to the ccTLD, or the surrounding relevant meta level, like the European Union for European ccTLDs).

Technically, any ccTLDs could change its restrictions. It happened in the past but more often it is to lift restrictions not to add more.

gTLDs can change their eligibility rules too, but it just needs to go through some ICANN procedures.

You also have TLDs that went bankrupted and stopped to operate. Some, specially gTLDs, are covered by "backup operators" so that existing domains do not disappear suddenly, however a TLD failing can happen and some predicts it will happen more and more in the waves of many new TLDs and newer ones to come.

Another important point that is often completely forgotten: depending on the TLD you use you might be under different national laws.

For gTLDs, you may at least always depend on US laws (because ICANN at the end of the day is an US entity). But then you need to take into account the registry jurisdiction and the registrar jurisdiction!

If you buy a .CAT domain name for example (technically a gTLD), through a Canadian registrar you may in fact depend on: - US laws because of ICANN and it is a gTLD - Spanish laws because .CAT is run by a Spanish entity - Canadian laws bacause you are using a Canadian registrar.

And your own nationality may add its own laws.

Added together that can create a difficult mix of rules about trademarks as their treatments is not uniform. For example priorities between rights on names for individuals and trademarks is not the same everywhere. Like for the famous milka.fr case that showed at least in France trademark rights being "higher" than personal names rights.

It is not often well known (for example if you register a .COM people are not necessarily understanding they will depend on all US laws, including things like DMCA for example) and not very clear because at best it is added in contract by reference (like the registrar saying it depends on jurisdiction X with disputes to be settled at court Z from place Y, but by reference it includes the registry contract which may have similar clauses and if the registry is for a gTLD then it includes by reference its own contract with ICANN).

So for an exhaustive panorama you may need to handle this as well.

TL;DR

  • carefully read registry rules on eligibility for the given TLDs you are interested with
  • "am I always secure to hold the domain name provided I renew it in time": technically never, because if you read all contracts you will often find fineprints such as "the registry may revoke any domain name at any time for any reason like security, etc." (it is worded less clearly than that but the effects are the same). Look at registrars contracts too since you (almost) never deal with a registry directly, and there are cases of registrars in the past just ditching a customer for whatever reasons, like bad press attracted by some websites
  • if you are not blatantly infringing a trademark at registration time, you should be ok, if you pay on time and if nothing changes, but this will never be a 100% guarantee.

It is possible for a company with a trademark dispute to take you to court over this, however I would not worry too much about it. They have to make a substantial claim that you have somehow violated their trademark with your given name ("trademarked" whenever you were issued an birth certificate, I would imagine). It's not like you were named "Google" or "Nestle."

The legality of registering your own name as a domain seems to be on your side. In cases where a trademark belongs to more than one entity, e.g., Dove soap and Dove chocolate, the domain dove.com belongs to whichever company registers it first.

Any company big enough to take you to court over trademark disputes isn't really going to care much about a low level TLD. Most companies don't bother registering their trademark for every TLD, and now that there are hundreds of them this seems even less likely.

ICANN's Uniform Domain Name Dispute Resolution Policy states the following in regard to applicable disputes:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

Stipulations ii and iii are unlikely given your intended use of the domains, so all in all I would say go for it. The policies regarding domain name registration and trademark seem to be on your side.

fine print: I am not a lawyer and this information is not intended to be used as expert legal advice

  • 1
    UDRP does not apply to ccTLDs, except the few that opted in to use it (see adrforum.com/ccTld) – Patrick Mevzek Dec 6 at 16:00
  • This is true, however the language used for the .us TLD's dispute policy reads almost identically to ICANN's. – tshimkus Dec 6 at 16:06
  • Maybe (I let legal experts compare the two and decide if they are the same or not, I won't), but it is not just the language that matters here. UDRP by ICANN allows the requestor to choose the panel and various options, etc. And some panels are more in favor of the respondant than others. Also your answer specifically cites UDRP... – Patrick Mevzek Dec 6 at 16:08
  • Uzi Nissan got the domain nissan.com for his Nissan Computer business long before Nissan Motor thought to get the domain for themselves (and in fact when Nissan was marketing autos under the name "Datsun" in America). Nissan Computer won the legal war, and Nissan Motor has several, longer domain names. But it's been a very difficult fight, and I don't know if it's something I'd want to do. – Monty Harder Dec 6 at 19:33
  • "Dove soap and Dove chocolate" No way! I always thought they were the same company. It seemed really curious to me that one company would work in such different markets. I thought maybe they were trying to be one of those brands that had their hands in everything. – JoL Dec 6 at 21:46

Once you register your name it's yours for as long as you keep the payments up to date. If you decide to register something that is trademarked by a big company, like campbellsoup.com, you should expect to have it challenged. Otherwise, common names and individual words (which cannnot be copyrighted) are available for everyone to use. If you inadvertantly register something that someone else really wants to use, like eugene.consulting, you have the option of selling it to them. Or, they could choose something else, like consulteugene.com.

If your name is actually Eugene, and especially if it is clear you are using the domain for a legitimate purpose (i.e. it has a website with your name on it), then any registry would be very hard pressed to take it away from you. Taking domains away from registrants is usually reserved for when there is both a trademark issue plus no current legitimate use of the domain.

As an example, check out Steam.com up until 2016. Hundreds of people daily typed in steam.com trying to get to Valve's steampowered.com digital game store, yet no action could be taken against them probably due to the facts that (1) "steam" is also a dictionary word and not just a trademark, and (2) the domain owner also owned a presumably legitimate business or organization related to the word "steam", and published that fact publicly on the domain.

As others have mentioned, the process and eligibility of domain takeover varies across TLDs, but there is no reason to believe that domain takeover is much easier. Everyone (both registries and registrants) benefits from the fact that domains are extremely difficult to take over.

EDIT: In the comments Patrick brought up an important high-profile case of Kraft foods seizing an ordinary first-name domain from a lady that happened to match their trademark. See his comment below for details.

  • 2
    " then any registry would be very hard pressed to take it away from you. " I disagree. There is the famous milka.fr case. It was brought by a lady called Milka but then the domain was taken from her because Milka is a famous food brand. See fr.wikipedia.org/wiki/Milka_contre_Kraft_Foods in French. And you could argue that there was a legitimate use of it, since she was sewing clothes and advertising it through her website. – Patrick Mevzek Dec 6 at 18:35
  • @PatrickMevzek Very interesting, that surprises me and is important to read. The most concerning part is that "Milka" is a biblical name, so it's not like her mother named her after a trademark. Interestingly from that article, "[Her] use of the violet color on the site milka.fr seems to have been decisive" in her loss of the court case and the domain. – Maximillian Laumeister Dec 6 at 18:43
  • Yes the color seem to have been an important factor for whatever reason. Some will argue this proves intent to stomp on the trademark obviously others just remark that the court thing was the last step of a long attempt to get the domain name. Also she did not even register the domain herself (my mistake), it was a gift made to her. One article in English about it: news.bbc.co.uk/2/hi/europe/4348585.stm (she went into appeal and lost it also). – Patrick Mevzek Dec 6 at 19:31
  • "steam" is also a dictionary word and not just a trademark is there any actual backing behind this claim or is it your own conjecture? Because, as far as I'm aware, this should be irrelevant. Valve can own the trademark for Steam but it's limited to the sphere of digital distribution. A boiler servicing business, for example, can also be called "Steam" with no trademark violation. And then you can have a spa called "Steam" that doesn't violate either of the other two trademarks. – vlaz Dec 7 at 15:31

Generally, the best defense against a domain name cybersquatting action is actually put your domain to good use. It is almost unheard of for the name of a going-concern business to be taken.

The only exception is if the name intentionally infringes on another mark. MikeRoweSoft.com was cute when he was a high school student doing websites for the local pizza place. When he opens his seventh sales office in his fourth province, not so cute anymore.

The trick is to not unintentionally infringe on another mark. Vanilla Ice's song "Ice Ice Baby", known for its riff from Queen/David Bowie's "Under Pressure", did that copying accidentally. (Unlke Lights' shoutout to both in "Ice".) If they can do it, you can do it.

Lastly, your defense is only as good as your defense. Any jackass can sue anyone for anything. I look at it this way: freedom isn't free, and we haven't had any military draft callups in awhile, but it's a lot like that. When you get picked, you stand and fight, or we all lose.

Molski, Righthaven and Prenda chiseled $500-5000 out of hundreds of people before one stood up. And that one shut them down permanently, getting the courts to bar their activities.

  • " It is almost unheard of for the name of a going-concern business to be taken. " See the milka.fr case, already discussed in other comments. – Patrick Mevzek Dec 7 at 16:44
  • @PatrickMevzek aside from "almost", I also cover Milka in my exceptions. She broke almost every rule: she intentionally infringed (using such a famous mark), and unintentionally infringed (the violet design language). Do you feel I should disclaim that quoted sentence more than I already do in the following paragraphs? – Harper Dec 7 at 18:13
  • "she intentionally infringed" I believe the case is more complicated than that because 1) she did not do anything she received the domain as a gift and 2) in some countries laws on names have priorities on tradermarks but it is the opposite in France and 3) as much as the color seem to have played a role in the final decision, the content could not produce any confusion with the brand as the two things are completely unrelated (like in France we have "Mont Blanc" both as a brand for pens and for a desert. Difficult to conflict the too even if same brand name) – Patrick Mevzek Dec 7 at 18:38
  • @PatrickMevzek well.... I suspect she also violated the "fight for it" rule. So would I, in her shoes. I would fight just hard enough, and in a way to get the maximum possible PR out of it, then settle for a princely sum of money. And cry all the way to the bank. – Harper Dec 7 at 19:12

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