Carrie A. Johnson and Jared J. Lefevre Resolve Domain Name Dispute
A retailer, successfully represented by Eastman & Smith members Carrie A. Johnson and Jared L. Lefevre, regained control of its domain name and website after it was held hostage by the web administrator.
Retailer alleged a web administrator it hired went rogue, acting without authorization to update the record owner of the retailer’s domain name to reflect the web administrator’s name. Further, the login credentials and server configurations for the domain name were changed by the bad actor, causing the website to go dark with no ability of the retailer to correct the settings to restore its website to active status and resume online sales. Retailer also alleged that after causing an outage of the retailer’s site, the web administrator demanded large sums of money to turn over control of the domain name to the retailer. Ultimately, the actions of the web administrator caused retailer’s site to go down with no sales for weeks.
The arbitration panel assigned to the proceeding considered the evidence and found the retailer had common law rights to its trademark via a long history of exclusive use of the mark, significant sales and unsolicited media coverage. The panel also ruled the web administrator lacked rights or legitimate interests in the domain name and used the domain name in bad faith, as evidenced by attempted extortion and interference with the retailer’s retail website. Consequently, the panel ordered the domain name transferred to the retailer, thereby enabling the retailer to regain control of its retail website.
Businesses routinely outsource management of domain names to employees and third- parties for the purpose of routine maintenance and renewals. The dispute discussed herein illustrates the potential pitfalls of outsourcing control of such important business assets. Namely, a party with login credentials for a domain name has the power to change the record owner, login credentials and to reconfigure important settings associated with the domain name, which could cause the associated website to go down. Retailers should only rely on reputable, trusted parties to manage domain names and to periodically confirm there have been no unauthorized changes to Registrar accounts for domain names.
Protecting brands is the heart of Ms. Johnson’s practice. For over 20 years, she has assisted clients with protecting and defending their most important assets and brands. Mr. Lefevre represents a broad and diverse range of clients in litigation and business matters. He believes, “Managed risk– not just managing risk – is what our clients expect and deserve.”