how to deal with a slanderous website that is using a trademarked domain name


5

A friend of mine accidentally let the .com domain of their US business expire, and it was snatched up by an unknown person who has a personal grudge against them. The website is now full of slanderous material about the business, and includes homes addresses of the business owners and pictures of their houses, cars, etc...

My friend owns the trademark on their business name, which is exactly the same as the domain name.

I tried to dig up more information about the .com domain, and the 'whois' shows that webnic.cc is the current registrar, which seems to be in Malaysia. The rest of the whois is privacy guarded by another Malaysian company.

[Note: I'm refraining from mentioning the exact domain name for privacy reasons.]

Q1) Isn't the (USA) law on the side of the business owner in this case?

Q2) Does the fact that the registrar is in Malaysia mean it's hopeless?

Q3) What's the easiest way to get the domain back? Does it cost a lot of money and time?

Update: they are both filing a UDRDP claim, as well as setting up a new domain (in case getting back the domain takes a while). I'll update this question again when it gets resolved.

Legal Trademark Domain DNA

asked Jan 9 '11 at 19:30
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Dustin Boswell
153 points

5 Answers


8

I agree that the quickest, most cost-effective approach is likely to be invoking the UDRP.

For a summary of what the complainant must prove, please see "How to Defeat a Cybersquatter".

Disclaimer: This post does not constitute legal advice and does not establish an attorney-client relationship.

answered Jan 10 '11 at 07:47
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Dana Shultz
6,015 points
  • +1 very good summary about UDRP. Do you know generally how long the process takes from initiation to conclusion? – Henry The Hengineer 9 years ago

7

Your friend needs to raise a dispute under ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRDP).

answered Jan 9 '11 at 21:04
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Mike Scott
691 points

1

I suggest you to ask a lawyer, at any rate I think :

  1. I guess it is.
  2. No, because the .com domains are managed by ICANN (or is it IANA?) and you can appeal to them.
  3. Probably, a Cease and Desist letter to both the domain owner and registrar.

I'm not sure how it works for .com domains, for for .it (Italy's ccTLD) you can appeal to the entity than assigns domain names and demonstrate that someone registered yourcompanyname.it and, hopefully, get the domain. Well, unless they registered the domain before you founded the company.

answered Jan 9 '11 at 20:58
Blank
Deleted
655 points

0

The website is now full of slanderous material about the business, and includes homes addresses of the business owners and pictures of their houses, cars, etc... [..]
My friend owns the trademark on their business name, which is exactly the same as the domain name.

First off, be real careful about picking a fight with a person who doesn't seem to mentally stable. You never know where this could end.

Some thoughts off the top of my mind, which I hope you'll consider very carefully, and not act on without good cause:

  • If the material is truly slanderous, and truly shows home addresses, photos of the home etc, then perhaps go to the local police? I don't know about US law, but where I live, this could possibly qualify for a "Restraining Order".
  • +1 to Mike Scott's Domain Name Dispute suggestion.
  • Have a lawyer write up a DMCA notice to the Malaysian domain registrar. And while you're at it, have the lawyer ask the registrar to identify the domain owner, as you may be compelled to take legal action against the owner. Having a clear, official record of who the owner is will be helpful under all circumstances. (DMCA's are based on US law. But plenty of overseas ISPs will still take them seriously, because there is no upside in getting involved in a DMCA dispute for them. It might work, it might not, depending on the Malaysian provider.)
  • Use something like Who Hosts or traceroute to find the ISP who hosts the actual website. Send the them a DMCA notice too, in the hope of closing down the site for EULA violation.
Again, think before acting on this one. Take care.
answered Jan 10 '11 at 04:05
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Jesper Mortensen
15,292 points
  • Thanks for all the advice. But if we do suspect the person is mentally unstable, what then? Just give up and let them own the domain forever? – Dustin Boswell 9 years ago
  • Dustin Boswell: Your call, really. (Or your friends', as you write.) I and others here have outlined some things that can be done. The decision is yours. – Jesper Mortensen 9 years ago

0

Unless you have too much invested in the business to migrate to another domain or mark without incurring huge losses, a lot of this is not worth the time or the risk as Jesper suggests. Filing and resolving dispute can take months or more, all of which is a tremendous opportunity cost. You should still do what you can to shut down the slanderous site, but do not let that consume you. Change your brand, bite the bullet, and remember to renew that domain name next time.

answered Jan 10 '11 at 13:09
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Henry The Hengineer
4,316 points
  • It would be very difficult to change their brand. This is actually mostly a brick-n-mortar business. I suppose they could just get an alternate domain in the meantime, and try to promote that instead :/ – Dustin Boswell 9 years ago

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