Business + Marketing

Reclaim Your Domain: How to Take Back Your URL When Another Business Nabs It

January 4, 2019

By Aaron M. Arce Stark

Photo © Ethan Yang Photography

It’s an all-too-common scenario: Years ago, you bought a domain name based on your personal name, and you used it to advertise and run your small wedding photography business. But then you went through some rough times and when the time came to renew your domain, it slipped your mind. By the time you realized, you had lost control of it—someone else had bought it and changed everything. Now, instead of wedding photography, it’s someone trying to sell cheap off-the-rack wedding dresses. So how do you get your site back?

Domain names are assigned by an organization called the Internet Corporation for Assigned Names and Numbers (ICANN), which is an international organization that simply makes sure web addresses are consistent. When a domain name dispute occurs, ICANN will refer you to one of several dispute resolution services that vary depending largely on where you are in the world. There is the Arab Center for Domain Name Dispute Resolution, the Asian Domain Name Dispute Resolution Center and several others. Most disputes in the U.S. will be handled by the National Arbitration Forum (NAF). Instead of taking your dispute to an actual state or federal court, you pay a private company to listen to your dispute and adjudicate it along the same rules as a real court would, and you agree to abide by the results. Arbitration is usually a faster but more expensive alternative to the court system, and some organizations like ICANN, which are multinational, require that you use arbitration.

In order to retrieve your domain, you’re going to have to file a complaint with the NAF, and if you’re filing a complaint, you need a cause of action. I mean, you lost your domain because you didn’t pay, and whoever bought it did so fair and square. There needs to be some reason why you should get it back. In this case, there are actually two good arguments to back you up.

The first is that your personal name is also the name you use for your professional services and when you use any word, symbol or device to identify your services, that word becomes a trademark. You can argue that whoever is using your domain name to sell wedding dresses for their business is infringing your trademark. However, using a word as an identifier for your business only grants you common-law trademark rights, which arise from state law. If you want federal trademark rights, you have to register your trademark with the United States Patent and Trademark Office.

Typically, federal trademark rights are superior to mere common-law state trademark rights because they are enforceable anywhere in the U.S. (or in any jurisdiction that has mutual intellectual property agreements with the U.S.), while state rights are only enforceable within that state. In this dispute, it matters less, because we’re talking about a website on the Internet, and the Internet is everywhere. If you have trademark rights over a website in one state, then you can sue under those trademark rights even if consumers are accessing the site from other states, because they could access it in your state.

Your second good argument comes from Title 15 of the United States Code, Section 1125(d)(1)(A)(i). This portion of the Lanham Act (which controls federal trademark law) is called the Anticybersquatting Consumer Protection Act, and it is designed to protect people from having their domains taken over by someone else. Section 1125(d) allows you to recover a domain name that is either your trademark or your personal name, that was acquired and used in bad faith for profit. Once you’ve filed a complaint with the NAF stating the reasons why your domain should be returned to you, the current owner has a short period of time to respond, and then the complaint and response will be adjudicated by a panel of either one or three judges (you get to pick, and three judges may be fairer but it’s also more expensive). The panel will return decisions far more quickly than a traditional court, typically within a few weeks, and if the panel decides in your favor, you simply take their decision to your registrar (the company or organization from whom you bought the domain name originally, like and the registrar will return the domain name to your control.

Retrieving a lost domain name containing your personal name or trademark is a fairly simple process, but be warned that it can be expensive, with filing fees for the NAF being upwards of $1,000. If you can’t afford the NAF’s fees, you can file in a traditional court for significantly cheaper, but be warned that the decision will take a lot longer to reach.

Aaron M. Arce Stark is a lawyer for artists and entrepreneurs. Learn more about his law firm, Stark.Law LLC.

This article is for informational purposes only. Contact a lawyer for legal advice.

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