Why You Should Register the Domain Name Before Publicly Announcing the Marketing Phrase

Serenity Springs v. LaPorte County Convention and Visitors Bureau, 2013 WL 1560206 (Ind.App. April 15, 2013) Here's a case that shows how with just a couple minutes' effort and a only a few dollars, marketing professionals can prevent loads of trouble and expense for their organizations down the road.

Plaintiff, a local government-run tourism bureau, announced at a public meeting that it had come up with a marketing phrase ("Visit Michigan City LaPorte") to promote local commerce. An employee of one of the businesses attending the meeting went home and registered the phrase as a domain name, and had it redirect to the company's website.

Plaintiff sued (in state court), and got the trial court to order the domain name be transferred, and a permanent injunction against defendant's use of the purported mark. Defendant sought review with the Indiana Appellate Court. On appeal, the court reversed and remanded.

The appellate court found that the mark comprising the domain name was geographically descriptive, and had not acquired secondary meaning prior to defendant's registration of the domain name. The court held that without this protection as a trademark, plaintiff's claims of infringement and cybersquatting failed, and that the lower court erred by finding in plaintiff's favor.

The real moral of the story is that organizations that are adopting trademarks as part of a branding campaign should take at least the minimal steps necessary to protect those proposed marks. In this case, a simple $12 investment in the prospective domain name hours before the meeting would have saved thousands of dollars in litigation costs over the next three years.