Protect Your Brand by Protecting Your Domain Name.

I won a case at WIPO last week. A link to the decision, in case you're curious, is here.

I was quite proud of myself. A goliath company was trying to wrest a domain name out of my client's hands and they lost. Because they were wrong. And what I realized when I started telling people that I had won at WIPO was that people had no idea what I was talking about.

People were completely unaware that there is a mechanism to challenge domain name registrations. Were you?

So why would you need such a thing?

Let's say you weren't fast enough. Let's say you've got a business and a competitor has started buying up versions of your domain name.

Worse yet, he's put a site up that looks confusingly like yours and directs people to his competing site.

What can you do? I mean other than tearing your hair out, of course.

Are you just out of luck?

Actually, no. You've got options.

You could ask your competitor to give you the domain name. But that's not very likely.

But you have another option.

Have you ever heard of WIPO? If not, don't worry, you're not alone. Many people haven't.

Ok, this is going to get confusing for a second, because it's a bit of an alphabet soup, but bear with me...

WIPO(the World Intellectual Property Organization) is the international body charged with resolving domain name disputes over global TLDs (or Top Level Domains (e.g., .com, .net, .biz, .info, .mobi, .org). By following the UDRP (Uniform Dispute Resolution Policy) and the supplemental rules, panels of one to three international arbitrators decide whether the domain should remain with the party that registered it or should be transferred to the complaining party.

Did you understand that? Don't worry, you're not alone.

What you need to understand is that WIPO is where you go when you need to challenge a domain name registration. And the UDRP (and supplemental rules) give you the formula to determine whether you have a valid claim.

The domain name dispute procedure is only available to resolve disputes that concern an "alleged abusive registration of a domain name". The criteria to determine whether the domain name has been registered abusively under Section 4(a) of the UDRP are:

(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and

(iii) the domain name has been registered and is being used in bad faith (examples of which are set out in Section 4(b)).

All three elements must be met to win at WIPO. If you can prove all three, the domain name will be ordered to be transferred to you.

Pretty cool, no?

It's also important to remember that if you are on the other side as a Respondent and someone brings an action against you at WIPO, you shouldn't necessarily capitulate to their threat. Some companies use threats of WIPO action (or even filing WIPO actions) as a ploy to get you to turn over your URL.

If you're in the right, hire someone who knows what they're doing and fight. Because it's not like a regular court case, the cost of doing so is far less than it would be in court.

Don't ever forget to protect your brand. Protecting your domain name is a big part of that.

Don't Leave Home (Or Your Business) Without One...

Are you a business owner? Do you execute a power of attorney when you go on vacation so someone can act on your behalf when you're gone?

Should you? Should you have one even if you aren't going anywhere?

Actually, yes.

If you need to leave your business and have someone make decisions for you (and/or sign documents for you) while you're unavailable, you need to have a power of attorney.

There are several kinds of power of attorney, but for the purposes of a business discussion, we'll only talk about the ones that apply here.

It is important to note that you can appoint whomever you want to be your agent (as long as they're a competent adult) with a power of attorney. The person you appoint doesn't, in fact, have to be a lawyer. But the person you appoint is often referred to as an "attorney in fact".

Make sure that the person you appoint is someone you trust. If the person were to be untrustworthy, they could cause you quite a lot of trouble.

The most broad is a durable power of attorney. The durable power of attorney allows someone to make decisions for you and act on your behalf even if you should become disabled physically or mentally and cannot make your own decisions.

It is something that, should you be a sole owner of a business, that you should consider having so that if something should happen to you, your business and your family can be taken care of. In fact, I often advise my clients to have one with their spouse so that if they should ever be incapacitated, your spouse can do things that require both of your signatures (like sell your house) even if you can't sign. Please note, however, that this will not cover medical decisions and that is a different kind of power of attorney.

Another kind of power of attorney is a nondurable or special power of attorney. It generally puts someone in the position of being able to sign documents for you for a specific purpose (e.g., to sell your house, to sign a contract for a merger, etc.) It does not survive your incapacity or incompetence though.

It's very important to check the laws of your specific state when giving power of attorney. Although some states allow an oral power of attorney, many states require it to be in writing. In fact, here in New York, your power of attorney is even required to be notarized.

I would suggest that you have it in writing even if your state doesn't require it. Here's why...

Some governmental entities, for example, the IRS, and even banks will not accept an oral power of attorney. Also, even states that allow a power of attorney to be oral require it to be in writing if the power that you're giving would require you to have a written contract (e.g., sale of real estate, wills, etc.).

It's not something that business owners think about very often, particularly small business owners, but you certainly should give it some thought.

Top 5 Factors for Choosing the Right Lawyer

You know you need a lawyer. You do.

You're a responsible businessperson and you want to make sure that you're protected. Or, you're too late to protect yourself and you need a lawyer to help you resolve the situation.

Either way, you've got a big decision to make. You don't want to choose the wrong person, do you?

As of the end of 2002, according to the American Bar Association, there were over 1,049,000 lawyers and the number certainly has gone up since then.

So, how do you pick the right one?

In my opinion, there are five major points to examine before hiring an attorney. They are (in no particular order) area of practice, cost, firm size, reputation and personality.

Many people make the mistake of thinking that cost is the most important factor, but it's certainly not. It's better to pay a little more and have it done right the first time than to have to have your matter cleared up later on by an attorney who could have done it right in the first place.

So, let's take a look at these factors (listed, in my opinion, in order of importance):

1. Area of Expertise - You wouldn't go to a cardiologist to deliver your baby, would you? Of course not. You want a doctor who specializes in delivering babies.

Contrary to popular belief, attorneys also have areas of the law that they specialize in. It's a little confusing because there are laws in many states that forbid attorneys to claim that they are a "specialist" in a certain field.

That being said, certain lawyers are good at certain things and no lawyer is good at everything. Don't believe otherwise and if a lawyer tells you that they can handle every matter that comes up for you, don't believe them.

I can even use examples from my own practice.

I focus my practice on online businesses. Although I do general business law (i.e., setting up companies, drafting general business agreements, etc.), I specialize in the special things that online businesses need (i.e., privacy policies, terms of service, contest rules, trademarks, copyright issues, WIPO domain name disputes, etc.)

And I wouldn't suggest that you have someone who isn't familiar with all of the issues surrounding a particular part of the law. For example, I won't do tax law. I know nothing about taxes and I wouldn't feel comfortable advising a client on tax law and tax liability. I also don't do litigation work anymore. I have other attorneys that I refer my clients to, but I don't have the time or bankroll to do a good job for a client.

2. Reputation - You should check out the person you're about to hire. Use the Internet. Google them. Do some searching and see what they've done. See what past clients have to say about them.

Attorneys can't give out their past clients' names without permission, but often they have permission from some of their clients to allow other people to call for references. If not, they may have testimonials on their website, their LinkedIn page, or other places that may allow you to gauge the reputation of your potential lawyer.

Ask your friends, family, colleagues or network who have had similar legal situations for recommendations. Who did they use? Were they happy? What do they wish they asked at the beginning?

3. Personality - You wouldn't think that your lawyer's personality would matter that much. But it does.

Assume that you're going to be working closely with this person for the duration of time that your project takes. You want someone who is easy to talk to, who takes time to listen and really understands and cares what you want to achieve.

You want to be comfortable asking your lawyer all of your questions, even the ones that you think are dumb. You also want someone who doesn't sound like they're rushing you off of the phone every time you call or that you're bothering them when you need to talk to them.

They work for you, not the other way around. If they can't be nice to you, then there are about a million other lawyers to choose from. Certainly, one of them would be more than willing to be nice to you.

4. Cost - I'm not nutty. Cost is certainly a factor. You should feel like you're getting the best representation that you can afford for the money that you can spend.

Ask up front what it's going to cost. If the lawyer works on an hourly fee and the project is something that they do often, they should be able to give you a ballpark figure as to what it is going to cost.

The exception here is litigation (or other negotiations). I've seen them take as little as $5-10 thousand dollars to way over $100 thousand.

Here's what I would suggest. If you really want to hire an attorney who can't give you a good ballpark estimate, have them keep track and update you on how much is being spent on a more frequent basis than monthly. That way you have a better idea of how much you'll be spending.

5. Size of Firm - This factor actually ties into some of the others.

As a rule, larger firms tend to charge more. A lot more.

They tend to have a team working on your project rather than a single attorney (as it would be in a solo practice), so you don't necessarily get to talk to the same person all of the time. This can sometimes lead to confusion in your project.

That being said, for complex matters, like litigation, it makes sense to use a larger firm. They have the finances to withstand the costs of a long, drawn out litigation. They tend to have very experienced people in very focused fields.

However, as a solo practitioner, I can tell you that most large firms that do what I do charge about $400 - $600 per hour for an attorney with my level of experience. I don't have their kind of overhead and I pass that savings on to my clients.

Who is the best lawyer for you?

Only you can answer that question. But if you keep the factors I've discussed in mind, you'll find yourself in a good relationship with a good lawyer.

If You Have Nothing Nice to Say...

You’ve undoubtedly heard the old adage, “If you have nothing nice to say, say nothing”. It applies to your business too.

Over the past few weeks, I’ve been asked several times by clients about defamation. They have someone saying (or writing) false statements about their companies and they want to know what they can do.

Most people understand the basic idea behind defamation, but humor me for those of you who don’t. Defamation occurs when someone makes a statement or claim to a third party about a person or company that sounds like it is a factual statement or claim that is, in fact, false. This is known as common law defamation, libel or slander.

So, if you own Bobby’s Burgers and a competitor starts spreading a rumor that cockroaches were found in your burgers (and this is untrue), most people understand that this is actionable as defamation. If it is written down (in a letter, email, advertisement, etc.) it’s known as libel. If it is spoken, (which is MUCH harder to prove) it’s slander.

If you want to remember, think of this:

Spoken = S = Slander
Written down or Literary = L = Libel

(Hey, it makes you sound smarter if you actually say it right....)

So, now you know all you need to know, right?

Nope.

Ok, don't get upset. What else do you need to know?

Most importantly, you need to know that common law defamation laws are not your biggest problem. Pay close attention here....

If you’re the competitor that was spreading the rumor, I’m sure that you’re thinking, “Well, what I say about my competitor’s business is true. One guy did find a cockroach in his burger. I’m protected.”

OR

“My customers know I’m just kidding when I said that there were roaches in the burgers at Bobby’s Burgers. I can’t be held liable.”

OR

“Well, I didn’t say it. My employee was just talking to a customer about what makes us a better burger. I can’t control what he says.”

I hate to break this to you, but you’re WRONG. And finding out that you were wrong can be costly. Defending a lawsuit can cost from the tens of thousands into the hundreds of thousands of dollars.

There are many laws that protect companies from defamation, but the one that is the most insidious is the Lanham Act (15 USC 22).

Ok, ok, before you jump all over me, I know that it’s the act that governs trademark law. That’s what I do.... Sheesh!

But the Lanham Act provides a remedy for something called “trade libel”. It says, in pertinent part, the following:

“Any person who...in connection with any goods or services...uses in commerce any...false or misleading description of fact, which...in commercial advertising or promotion, misrepresents the nature, characteristics, or qualities...of his or her or another person's goods, services or commercial activities...shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.”

Did you read that carefully?

Read it again.

What it essentially means that if someone in your company says something misleading or false about another company, you could be in BIG trouble.

It is very important to understand that what qualifies as misleading is very much in the eye of the beholder. Comparing your products to another company’s products that shows the other company’s products in an unfavorable light, could land you in a heap of trouble.

Before you speak to other people, or write anything down about a competitor, ask yourself a couple of questions:

1. Is what I’m about to say false or misleading in any way?

2. If the person that I’m talking to were to go back to the competitor, would what I’m saying likely be exaggerated in reporting to the competitor or other people?

3. Am I about to make a statement that compares the other business unfavorably to mine?

4. Am I making a statement that could be interpreted as a negative fact about someone else’s business?

If so, don’t. Stop yourself. Don’t let your employees do it either.
Hang on. I hear you yelling already....

So, how do you market your business if you can’t compare your company as being better than companies that also do what you do? Well, if you can’t only market your business by saying positive things about your own product or service without unfavorably comparing your competitors to you, stick to what is referred to as “puffery”.

The legal term “puffery” is generally used in reference to testimonials and the like. Puffery statements are claims that are subjective rather than objective in their view and are not likely to be taken as a statement of literal fact. The Federal Trade Commission (or FTC) defined puffery as a “term frequently used to denote the exaggerations reasonably to be expected of a seller as to the degree of quality of his product, the truth or falsity of which cannot be precisely determined.”

You know the statements. They sound like this. “Bobby’s Burgers are the world’s best!” or “Bobby’s Burgers are the greatest!”

So, what does this really all mean to you?

Just like I said before. If you have nothing nice to say about a competitor, say nothing at all.