You want this website domain name? That’ll be $18,000, please.
Ger McNamee is the owner of Gongshow Gear.
By Mathew Klie-Cribb
That’s the price Ottawa-based hockey apparel company Gongshow Gear was quoted after the website name it had been waiting a decade to acquire was sold to a cybersquatter.
Instead of paying for the domain, www.gongshow.com, which was clearly being resold for a profit, Gongshow filed a complaint with the Internet Corporation for Assigned Names and Numbers, or ICANN, the international body that regulates website addresses.
The company recently won the domain without paying a cent to the squatter.
“Obviously, it’s a big branding win for us,” said Gongshow owner Ger McNamee. “This is something we’re extremely excited about and that our customers are going to benefit from.”
The domain, which was officially transferred to Gongshow on Sept. 19, had belonged for more than 10 years to a blogger whose last name was Gong. In November 2012, it was sold in a closed auction, but Gongshow was not invited.
“That part doesn’t really add up to us,” said Gongshow’s trade agent, Amy Croll. “You’d think Gongshow Gear would be contacted, because you’d think as the trademark owner, in an auction, they’re going to be the party that is willing to pay the most.”
Instead, it was sold to a man Gongshow still knows little about. He went by the name Jerome, was apparently located in Dubai, and wanted $18,000 for the name, said Ms. Croll.
Gongshow had been building its brand for more than 11 years and the name is registered as a trademark in more than 15 countries, said Mr. McNamee.
“The fact that this guy told us he had never heard of us before when he tried to sell it to us was, in my opinion, laughable, and it was further evidence to us that this guy had bad intentions,” he said.
So Gongshow consulted its trademark agent, Ms. Croll, who laid out the options.
Whenever anyone registers a domain name, they check a box saying they agree to the regulations set out by ICANN. If ICANN determines a person has violated the agreement, it has the power to transfer the domain name, said Ms. Croll.
For a complaint of this kind to be successful, it must prove three things: that the domain is confusingly similar to your trademark; that the current owner of the name does not have a legitimate interest; and that the owner is using the domain in bad faith.
“If you aren’t successful in one of these three grounds, you will lose,” said Ms. Croll. “So you have to be successful in all three.”
The first two were pretty easy to prove, she said, since Gongshow has the domain registered as a trademark all over the world and the squatter had not used the domain in any way. To prove bad faith, she had the guys at Gongshow carry on an e-mail correspondence with the squatter pretending they wanted to buy the domain. That’s when he raised the price from $15,000 to $18,000.
“At that point, I felt we did have enough to be able to prove that he purchased it to resell it to the trademark holder,” said Ms. Croll.
After that, the process was very quick.
“Once we submit, the other side has 20 days,” said Ms. Croll. “After those 20 days, both sides are given five days to submit anything additional, and sometimes there’s administratively a couple days, but once it goes to the board who makes the decision it’s within about two weeks.”
Businesses must also consider whether it makes financial sense to take a case through the ICANN process, or whether it would be cheaper to just pay for the domain.
“You’re talking on average spending between a very low-end range of five grand and, more accurately, most companies who have launched a complaint with ICANN probably spend at least 10 grand in legal fees, plus the fees that go to the forum,” said Ms. Croll. “That’s part of the problem, because squatters know that.”
One of the reasons ICANN was established in 1998 was to make this process cheaper. Companies were paying $50,000 to take such claims to court, an unfair amount for companies to spend to gain control of a domain that rightfully should be theirs, said Ms. Croll.
There are also jurisdictional issues since the Internet is international, she added.
“ICANN was the solution, and I think that it does a really good job for what it’s worth,” said Ms. Croll. “It’s a lot easier than taking someone to court, especially when half the time you can’t tell who these people are.”