C3 Patent and Intellectual Property Law

Mar212011 | Steve O'Donnell

Steveodonnell.com, now with fewer penises

About 10 years ago I attempted to register the domain steveodonnell.com and found that it was already taken. I was curious so I opened the site and to my great amusement and dismay, discovered that it was a gay porn gateway.

I, quite reasonably, wanted that domain for myself, so I looked up the registration information with a whois search and set a reminder to check the registration on its expiration date. Every time I checked, the domain registration was renewed by the same company and still contained a big image of the other Steve O’Donnell showing him in all of his <ahem> glory.

I registered the names of my two kids so they wouldn’t have to eventually deal with a similar issue (which I suggest everyone does).

Finally, this year I checked and the domain registration wasn’t renewed, but it was still in its initial redemption period so the original registrant could still renew. I looked into a number of domain “drop-catchers,” companies that buy and resell expired domains, but they seemed problematic--specifically, they tend to want a fee upfront to even try, and then if they do catch the domain, they auction it off to all bidders that paid for the initial catch attempt. In short, working with them wouldn’t guarantee that I would get the domain even though I paid their fees.

Instead, I simply emailed the administrative contact listed on the whois lookup and said that if they were going to let the domain expire anyway, that they should instead renew the registration for a year and then transfer it to me for what I thought was a reasonable amount. In that way, the original registrant received something rather than just letting the domain go and I was assured that I would become the new registrant.

The administrative contact accepted my offer and after a couple weeks of finalizing details, making payment, and waiting for the registrars to update the registration, I am now the proud owner of steveodonnell.com. Currently the URL simply forwards to this site, but I will probably repurpose it at some point. I doubt I’ll use it as my main business domain, since it might be blacklisted by some databases, and I’d hate to have someone try to find my legal practice and see that my site has been blocked for porn. The entire process was painless, fast, and relatively inexpensive--at least as compared to the uncertain process of using a drop-catcher.

So, how does my story interface with intellectual property? Obviously, I have some degree of IP rights to my name, but in this instance, where someone registered my name before I did, I probably couldn’t force a domain turnover. There are a few of us Steve O’Donnells. My one and only Twitter list is a list of people with the same name as me. We’re a diverse bunch. There are also some Steve O’Donnells of note, such as an actor, a writer, and an IT professional. It would be an insane mess if we all got into a fight over who had superior rights to the domain.

On the other hand, lets say that I’ve been doing business as “Steve’s Pizza” (not a great branding decision to use such a mark from a trademarking standpoint--but it’s just for illustration) and I find that another pizza place has already registered “stevespizza.com.” I probably won’t be able to force a domain turnover through the ICANN dispute process, but if the other Steve’s Pizza sells the domain to a competitor of mine, I’d be in a good position to dispute the competitor’s registration and force a turnover, especially if I was able to point to a registered trademark for Steve’s Pizza.

Certainly there are a lot of issues involved if someone has already registered a domain that you want, but there are ways of approaching the issue that can give someone an upper hand in negotiations or can even force a turnover. If you’re in such a situation, you should speak with a lawyer that understands the interplay of domain registration and trademark to create a plan to capture the domain.

If you're dying to see the previous version of steveodonnell.com you can find it on the Internet Archive: Wayback Machine.