Starting a website? When it comes to registering a URL, don’t try to use the name of another entity in your URL. If you do, you could have your site URLs stripped from your control and lose years of effort and sweat equity that you expended building a business on your improperly registered domain names.
That’s what happened to Zain Jeewanjee, a principal at the San Jose, Ca.-based Zain Jeewanjee Insurance Agency, in 2014.
From the beginning, Jeewanjee wanted to target the travel insurance industry. He saw a niche in selling travel insurance to foreign expats for whom English was a second language. He soon operated a number of retail travel insurance portals in the United States selling policies to consumers through his websites.
The problem: Jeewanjee chose to operate the portal under the domain name “TravelersInsurance.com.” He also acquired the domain names “TravelersInsurance.co” and “MytravelersInsurance.com,” registering them each with GoDaddy.com.
You can probably see where this is heading.
Travelers Moves to Protect Its Trademark
It took a while. But after 16 years, the Travelers Indemnity Company got around to enforcing its trademark claim on “TravelersInsurance.com,” and the other closely-related URLs in operation under Jeewanjee’s control.
The claim went to arbitration, where Travelers raised the following specific claims:
The Travelers name was a registered trademark.
The domain names Jeewanjee selected were similar enough to the Travelers Trademark to cause confusion among consumers.
The Zain Jeewanjee Insurance Agency and Jeewanjee family have no rights or legitimate interest in the word “travelers” as a trademark.
The Zain Jeewanjee Insurance Agency registered the domain names in bad faith.
The Jeewanjee Insurance Agency did not respond to the complaint or show up at the hearing, so the National Arbitration Forum panelist Debrett Lyons reviewed the documents available and found that the Jeewanjee Insurance Agency had deliberately attempted to deceive the public by using the Travelers trademark in the URLs. She therefore ordered that all three domain names be transferred to Traveler’s control.
But embedded in the arbitration decision is another important lesson: Lyons pointed out that Jeewanjee had been using one of the trademarked URLs for 16 years before Traveler’s initiated action. Had Jeewanjee responded to the complaint or showed up at the hearing and contested it on the basis of that 16-year delay, it’s possible that they could have prevailed on that particular domain name, and Travelers’ claim to the URL could have been rejected due to the long unexplained delay.
Lessons for Agency Principals
Don’t register a domain name or start operating a business under a trademark without conducting a trademark search. Consult a trademark attorney early in the process.
Once you have established a trademark, register it immediately with the U.S. Patent and Trademark Office.
Expect businesses with established trademarks to defend their turf. Don’t count on them not noticing. Very big companies can and will defend their trademarks against infringement by very small ones.
If your trademark is being infringed, don’t delay taking action. Unexplained delay in enforcement can be used against you. Send a cease and desist letter immediately, and follow it up by filing an arbitration claim or lawsuit as appropriate. In this case, Jeewanjee was obligated to accept arbitration, under the terms of its contract with Network Solutions, Inc. and the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy.
Don’t ignore complaints. Jeewanjee was non-responsive, but all that accomplished for them was to lose a point they potentially could have won.
Trademark status and protection is rooted in “actual commercial use.” Simply registering a domain name does not establish or protect the domain name as a trademark.
Don’t rely on vendors like GoDaddy or Google Domains to do a trademark search before allowing you to register a domain name. The responsibility is yours.
Assert your rights under the Anti-Cyber Squatting Consumer Protection Act. It is illegal under this law to “illegal to register, “traffic in” or use a domain name that is identical or confusingly similar to a distinctive or famous trademark. At a minimum, courts will transfer control of illegally established sites. In some cases, they will also award monetary damages.
Consider using the ICANN procedure for challenging the illegal use of domain names. This process is binding even in other countries, whereas pursuing a claim in a U.S. court may get you a judgement, but it’s worthless against squatters and trademark infringers in other countries.
Don’t take action – even sending a ‘cease and desist’ letter – without first consulting an experienced lawyer well versed in trademark infringement.
Check your trademark regularly via Google, Bing and on major industry aggregator sites, to ensure no one else is using your trademark without your permission.