All too often, website owners are lax in nailing down
ownership and control of valuable domain names, and as a
result, are often required to litigate these issues costing
them thousands. The case of Dawson v. Brandsberg
illustrates these costly mistakes and how to avoid them.
Dawson v. Brandsberg - The Facts
The dispute was between a website operator and developer
regarding rights to a domain name that consists of the
operator's name: "robertedawson.com". Plaintiff Dawson and
his real estate firm (the website operator) hired Defendant
Brandsberg (the website developer) to develop a website. A
key fact is that there was no written agreement regarding
possession or use of the domain name.
Other important facts include:
* Plaintiffs requested Defendant to register the domain
name at issue;
* Defendant developed the website associated with the
domain name; and
* Plaintiffs paid for the initial registration of the
domain name, plus development, hosting, and maintenance
fees for the website.
Eventually, the business relationship soured, and the
Plaintiffs sought to transfer the domain name and the
website to another internet service provider. The Defendant
refused to transfer the domain name and the website, and
essentially held the domain name hostage.
Dawson v. Brandsberg - The Decision
Dawson brought suit against Brandsberg in the U.S. District
Court in Virginia under the Cyberpiracy Provisions of the
Lanham Act,Section 43 (d), 15 U.S.C. 1125(d). Dawson v.
Brandsberg, 2006 WL 2915234 (W.D. Va. Oct. 10, 2006).
Plaintiffs argued that the federal cyberpiracy prevention
statute was applicable, and that it protected the domain
name and imposed liability for a bad faith registration
with the intent to profit from the registration. Plaintiffs
also argued that it had a non-exclusive, implied license to
use the domain name, given that Plaintiffs had paid for
registration, development, hosting, and maintenance of the
website.
Defendant Blandsberg argued that:
* Plaintiff's name was not a proper trademark because it
was not distinctive at the time of registration of the
domain name,
* Defendant had registered the domain name and developed
the website with the intent to sell it to Plaintiff at a
later date, and
* Plaintiff had no copyright or implied license in the
website.
Defendant Blandsberg filed for a motion to dismiss most of
the counts of the suit. The Court ruled in favor of
Plaintiff Dawson denying the motion. The Court seemed to
rely heavily on Plaintiffs' arguments regarding the implied
license, stating "Even assuming that Brandsberg created the
website, if Plaintiffs have no license to use the website
or domain name, the creation would be valueless".
Conclusion: Lessons Learned
Don't rely on oral agreements; get it in writing! Provide
not only for ownership of the website, but also of the
domain name.
Provide that your domain name be registered in your name,
not in the name of the vendor.
Also, note that control over the domain name is very
important, and control goes with knowledge of the ID and
passwords to the domain
name account with the Registrar. So to maintain control, be
sure to change the password so that you are the only one
who has access to the administrative controls for your
domain name at your Registrar's site.
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Chip Cooper is a leading intellectual property, software,
and Internet attorney who advises software and ecommerce
businesses nationwide. Chip's easy and affordable online
contract drafting service coordinates website contracts
such as Terms of Use, Privacy Policy, Subscription,
Membership, and SaaS agreements. Visit Chip's
http://www.digicontracts.com/ site and download his FREE
report, "12 Sure-Fire Ways Your Website Can Get You Sued".
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