No, you probably shouldn’t register that Pokémon domain name

Catching Pokémon is a blast. Catching a lawsuit for that trademark-infringing domain you bought, not so much.

To quote that timeless bit of ancient wisdom: “gotta catch ’em all.”

The domain industry has been taking this mantra to heart since surprise app store sensation Pokémon GO enchanted us all, and then sent a few of us walking straight into trees. If you’re looking to get in on the domain craze by registering a domain name containing the “Pokémon” term, you might find yourself headed into something worse: a legal dispute.

Some background for the six people who haven’t heard yet: Pokémon GO is an app that uses your phone’s AR and GPS to simulate a parallel world unlike our own, where catchable creatures called Pokémon hide in our real-world backyards, Pokémon trainers battle one another for bragging rights, and children go outside on purpose.

Pokémon GO is a smash thanks to its franchise’s established brand resonance and “get out and play” philosophy. And as smashes often do, the app seems to have sparked a gold rush for domain investors aiming to capitalize off its massive success.

Like a Venomoth to the flame, it appears that some domain investors are unable to resist the allure of potential profit from selling a Pokémon domain name in the domain aftermarket, despite warnings from industry pros. In a post over at DomainInvesting.com, Elliot Silver counted “nearly 4,000 .com and .net domain names … registered with the Pokemon trademark in them during the past 7 days.” Meanwhile, Pokémon domain names are also making like a Voltorb and blowing up on domain selling sites like Sedo and Flippa.

While some of these investors might have made some sales, anyone with a Pokémon-related domain name might do better to prepare for trouble. You see, Pokémon is a registered trademark to Nintendo of America Inc. Registering a domain name based on a registered trademark is a seriously risky (if you will, “Chansey”) move, and infringing registrants opening themselves up to an infringement or cybersquatting complaint.

ICANN (short for the “Internet Corporation for Assigned Names and Numbers”) defines cybersquatting as “generally bad faith registration of another’s trademark in a domain name.” Cybersquatting can also refer more specifically to the practice of registering a trademark in a name in hopes of selling it back to the trademark holder. Both ideas probably strike you as being so misguided you can’t believe anyone would actually do it. And yet, that’s precisely what’s happening in a significant number of Pokémon domain registrations.

Generally speaking, you’re putting yourself at risk if you register a domain for the purposes of cybersquatting, or if the domain infringes on a trademark. If a trademark holder catches you doing it (and it’s not hard for them to find you), they can then file a dispute through an ICANN-approved process called UDRP (short for “Uniform Domain-Name Dispute-Resolution Policy”).

For all gTLDs under ICANN’s management (which includes most generic domain extensions and excludes country-code domain extensions like .EU or .DE), UDRP is a procedure that allows cases of “abusive, bad faith domain name registration” to be resolved in a quick, low-cost way. If a UDRP is filed, an assigned party will mediate the dispute between the trademark holder and the registrant before arriving at a decision.

In a UDRP case, the trademark holder must establish three things: (1.) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2.) The registrant has no rights or legitimate interests in respect of the domain name; and (3.) The registrant registered and is using the domain name in bad faith.

Registrants who receive a UDRP face two choices: Surrender now or prepare to fight. Proving bad faith is the deciding factor in many UDRP cases, and it’s also where some registrants might find a way to push back against a UDRP claim. For example, a registrant may have a stronger case against the claim if they’re using the domain in a unique way — namely, one that does not capitalize off a trademark by misrepresenting it — or if you registered your domain before the trademark holder registered their trademark. (The latter possibility probably won’t help any unlucky registrants among those 4,000 newfound Pokémon domain owners; the Pokémon franchise has been around for decades.)

Of course, cease-and-desist letters, lawsuits, and other legal avenues are also viable forms of recourse, and Nintendo is familiar with all of them. These methods can be costlier and more drawn out than the smoother, more streamlined process of a UDRP filing. On the other hand, the cheaper costs of filing a UDRP can add up fast when you’re looking at thousands of potential cases of infringement. Fittingly, Nintendo is anticipated to pick its battles carefully when dealing with the explosion of Pokémon domains it’s now facing.

Sorting through the debris of that explosion may take a little while. Nobody seems 100% sure which of those 4,000 registrations were made in bad faith by opportunistic investors (likely a bunch), which were from fans hoping to share their love the franchise in good faith (quite possibly a few), and which were from Nintendo itself (Ditto). Nintendo also hasn’t been spotted filing any UDRP complaints against Pokémon-GO-related domain names specifically — yet.

But none of this should necessarily comfort registrants who now find themselves walking the cybersquatter’s tightrope. Put simply, if you aren’t the trademark holder, registering a domain with that trademark opens up the possibility that a complaint will be filed against you. And rest assured, Nintendo is no stranger to the UDRP process.

But even if you ignore all of those arguments (but seriously, if you are we would suggest you rethink that decision), there’s also the dubious long-term stability of a domain based on a pop-cultural phenomenon whose future fame is far from assured. Pikachu and his pals were the biggest thing on the planet once before, after all. How much longer until they’re quietly shuffled back into the junk drawer of public nostalgia?

Don’t get us wrong. Watching Pokémon unite the world these last three weeks like it did 20 years ago has been awesome, and we can’t wait to see what exciting new interactive experiences the app inspires on the horizon. For our part, we’re excited to see how game developers and gamers share their passion for gaming with the forthcoming release of the .GAMES domain extension on September 21st.

But right now, the whole thing comes down to common sense, which Pokémon GO appears to have taken from a few of us, along with our cynicism and stifled capacity for childlike wonder. “Don’t register a domain whose trademark you don’t own” is already as common as common sense gets in the domain world, and yet it doesn’t seem to stop some investors from grabbing up those very domain names. And once Pokémania gives way to the Poké-hangover and the craze dies down (as it surely will sometime), the potential reward to come from selling a Pokémon domain will diminish along with it. Meanwhile, the risk of fetching a UDRP dispute for that same domain will still be there. And that’s a battle your level 700 Pidgeot can’t help you win.

So while the Pokémon sensation may be tempting to make a quick buck on, save yourself the trouble. There’s a better way to make the most of Pokémon GO phenomenon while it’s here: strap on your walking shoes, fire up that phone, and start hunting. It’s a beautiful day for an adventure.

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