IP Update

The Web: Are You Truly Master of Your Domain?

July 11, 2007

David Kelly, chair of Finnegan's Trademark and Copyright Practice Group, outlines how to prevent vendors from holding "hostage" domain names and web sites by entering into appropriate contracts with vendors.

The Internet is an important marketing and sales tool for many businesses today. Businesses small and large contract out to vendors various services relating to their Internet presence including website design, website and email hosting, domain name registration, and marketing. It is not unusual for these vendors to register in their own names domain names containing the businesses' trademarks instead of in the names of the businesses that retained them. In most cases the vendors' ownership of the domain names does not create any problems because the parties have a good working relationship. When the relationships deteriorate or end, however, the vendor's ownership of valuable domain names becomes an important issue and frequently leads to litigation. In four recent cases that touched a wide variety of fields—computers, real estate services, legal services, and medical services—businesses had to sue vendors to attempt to reclaim domain names containing their trademarks or to get their websites and/or email up and running. There are steps businesses can take to protect themselves if they hire someone else to register a domain name and/or design and host a website for them.

Read "The Web: Are You Truly Master of Your Domain?"

Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.