–Dan Kelly, Attorney
In giving advice in the field of intellectual property, one hackneyed phrase repeatedly crosses my lips: an ounce of prevention is worth a pound of cure.
When it comes to protecting a brand or trademark on the Internet, I may start saying, “an ounce of prevention is worth a ton of cure.” A couple of weeks ago, the Corporation Service Company released the results of a study that found, among other things, that brand owners had spent more than $220 million to obtain domain names from third parties through the UDRP dedicated arbitration process. The study found that if the brand owners had registered the disputed domain names privately (prior to the third party doing so), the costs to obtain the domain names would have been approximately $1.1 million. An ounce of prevention, indeed. That is a 200:1 ratio.
As I noted previously, the going rate for a domain name registration for one year is somewhere around seven to ten dollars (retail, not wholesale). At the National Arbitration Forum, the cheapest filing fee to initiate an arbitration on a single domain name is $1,300. Attorney’s fees to prepare a UDRP complaint will typically run anywhere from a couple to several thousand dollars. Given the cost disparity, I think that a brand owner is well advised to sit down and contemplate this question: “What domain names would I spend several thousand dollars to obtain if a third party came along and started using them to advertise confusingly similar goods or services?” The domain names that answer that question are the domain names that the company should go out to register proactively.