Avoid Making the Next McDonalds.com Mistake
 
By Herbert Allen • Attorney at Law Please note that information in this article may be time sensitive and specific to the date it was originally published. Please contact the author for updates to this information.

Business domain names have come a long way since the October 1994 article in Wired magazine Business domain names have come a long way since the October 1994 article in Wired magazine about the McDonalds.com domain name. The author of the article made several calls to McDonalds to ask why they hadn’t registered McDonalds.com. At the time, McDonalds had no interest in registration, so the article’s author registered it and asked his readers to send feedback to his new ronald@mcdonalds.com email address. Later, McDonalds realized its mistake and donated money to charity at the author’s request to get control of the McDonalds.com domain name. Business owners today are far more aware of the importance of owning the domain name for their business. While registering the .com domain name for your business is a very good start, today’s smart business owners must consider other issues to avoid committing the next McDonalds.com mistake. Here are some of those issues:

Register the right domain names at the right time
The best advice here is to register early and often, particularly now that domain names are available for $7 a year or less through registrars such as godaddy.com. Make sure you register your domain name before applying for trademark registration. Many businesses spend hundreds if not thousands of dollars obtaining a federal trademark registration only to discover that someone else has registered the domain name for the trademark. Registering domains that one doesn’t have the right to register is known as “cybersquatting.” It’s very likely that some cybersquatters are tracking new trademark applications on trademark office websites and then registering related domain names if the trademark owner hasn’t done so. There are a variety of legal measures available to obtain control of a domain name from a cybersquatter, including domain name dispute resolution complaints and litigation in court. However, these legal measures frequently cost more than the amount a cybersquatter will demand to transfer the domain to you.

Collateral registrations
You should also consider registering obvious misspellings and other variations on your business name to prevent the practice known as “typosquatting” where someone else registers these variations of your domain name and redirects traffic intended for your site to other websites. There are many well known examples of typosquatting on the Internet today including goggle.com and wiipedia.org. In addition to the .com, you should also consider registering the .org, .net, .info or other top level domains for your business name.

Ownership of website content
After registering your domain name, It’s time to build the website. If you hire an outside company to build your website, make sure your contract with the web developer specifies that you own the content on the website. Many business owners assume they own the content on the website because they paid the web developer to create it. The presumption under U.S. copyright law is precisely the opposite: a non-employee web developer is the presumed owner of the content on the site unless the developer transfers ownership in writing. You should also place appropriate copyright and trademark notices on the site so website users know who owns the content.

Avoiding infringement liability
As websites become increasingly interactive, more websites are allowing users to post comments, pictures, videos or other content on the website. If you allow others to place content on your website, you should make sure the site complies with the “safe harbor” provisions of the Digital Millennium Copyright Act (the “DMCA”). Under the safe harbor provisions of the DMCA, you can avoid liability for copyright infringement by providing a contact on the website for copyright infringement complaints related to user-posted material and meeting several other requirements. Owners of copyrighted material posted on your site can then send a takedown letter to that contact requesting their copyrighted material be removed from the site. If the allegedly infringing material is removed quickly and the other requirements for the safe harbor are met, you can avoid liability for copyright infringement. An intellectual property attorney should be consulted to confirm that your website meets all the requirements for the safe harbor.

Protecting Your Content
You should also consider carefully drafted terms of use on your website to prohibit uses that are contrary to your interests. For example, if you provide pricing for goods and services on your website, your competitors may use programs known as “screen scrapers” to systematically copy this information. There are a variety of legal claims that can be asserted to stop this type of copying, but these claims are easier to establish if such copying is prohibited by the terms of use. Depending on your situation, there may be a range of other domain namerelated issues to consider. If you take care of these issues before a problem arises, you will not only avoid being the subject of the next article about online mistakes, you can save a great deal of time and legal expense.

Herb Allen is partner with Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A. in Jacksonville.
He can be reached at (904) 470-0002 or hallen@addmg.com.