Conquering Cybersquatters

Folio: The Magazine for Magazine Management, April, 2001 by Susan Thea Posnock

Legislation and a dispute-resolution system help publishers protect their brands from cybersquatters, but being proactive is still the best way to defend your turf.

In the fight to keep cybersquatters from hijacking domain names, a publisher's best defense is a proactive offense.

Though the Internet presents a powerful new channel, it also enables individuals to encroach upon magazine brands, by registering domain names with the intent to sell the URL back to the publishers at a high cost or lure customers to their own sites.

Gruner Jahr, slow to register domain names surrounding the revamped McCall's--now Rosie-- recently won its cybersquatter battle and the right to use the domain name rosiesmccalls.com through the Uniform Domain Name Dispute Resolution Policy, or UDRP. The policy was developed by ICANN (The Internet Corporation for Assigned Names and Numbers) and is administered by the United Nations' World Intellectual Property Organization, or WIPO, to handle domain-registration cases only. Through UDRP, a panel of arbitrators reviews a case in a process that costs the plaintiff $l,500 per suit.

Other publishers who have recently squabbled over a domain name include Hearst, which won a decision to have the URL Esquire.com transferred to it; and AOL Time Warner, which won a case involving the Harry Potter series, when a total of 107 Internet addresses were ordered transferred to the company. Both decisions were reached through the UDRP last summer.

Publishers say the best way to avoid cybersquatters is to strike first by registering domain names early. "We typically don't write the business plan or get the money approved without securing the URL," says Ann Wilkins, vice president, Internet Strategy and Development, Penton Media.

Penton has been aggressive in securing names, Wilkins says. For example, the company secured some 20 domain names related to the concept of a site for educating design engineers. "Be proactive," she says. "Register more than less, relative to the brands that you foresee developing." She says the company has approximately 250 domain names registered, with close to 10 percent currently not in use.

For companies that want to keep a registered URL name from tipping off media and competitors to new launches or acquisitions, there are options. "We have a program where we offer private reservation," says Cheryl Regan, a spokesperson for VeriSign Inc. (formerly Network Solutions), a domain-name registration firm. "You can register a domain name without revealing your identity. The idea is to keep strategic information confidential." The service costs $250-- compared to a regular registration fee of $70 for two years.

Besides being proactive, publishers have other legislative alternatives. In 1999, Congress enacted the Anticybersquatting Consumer Protection Act. Similar to UDRP, it allows publishers to take civil action against anyone with bad-faith intent to profit from use of an identical or confusingly similar domain name. Costs, damages and injunctions are also at stake. It can also include a wider range of domain-name classifications, such as country-code URLs.

The issue could get even larger and more complex as several new generic top-level domain names (gTLDs) have been chosen and could be in use by midyear. Companies can request, but not register at this time, domain names that use dot-info and dot-biz. Other new names, including dot-museum, dot-aero, dot-pro, dot-coop and dot-name, are considered "chartered" gTLDs, which means the registrant must meet certain specific criteria to use them, according to VeriSign.

The current protections are still pretty broad, says Francis Gurry, assistant director general for the WIPO. UDRP is effective, but it can't be used across the board. "It's a procedure that is designed for black-and-white, open and-shut cases," he explains. "One party has commercial identity; on the other side, they are simply trying to steal or feed off their reputation."

Publishers have encountered areas where the line is blurred. One potential area of confusion is around words that aren't considered trademarks. For instance, Emap USA has the trademark for Teen Magazine, but not for the word "teen." John Cobb, president of automotive/motorcycles at Emap Digital USA, says the company had no recourse against the site Teen.com.

Emap USA has been able to protect against more obvious infringement, such as its cybersquatter fight over Hotrodmagazine.com, using the courts to file temporary restraining orders and motions that the party cease and desist from using the URL--rather than involving UDRP, which can take longer. "[UDRP] was set up to inexpensively resolve these kinds of disputes, but if speed is of the essence, especially if someone has hijacked one of your names and linked it to a porn site, it is more effective to use the courts," says David Jacobs, a Los Angeles-based attorney who specializes in intellectual property and works with Emap USA. "A lot of people out there believe that if they register the domain name first, it belongs to them, even though it's someone else's trademark and property."