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Domain names disputes

The Internet has become wildly popular with businesses (including their inclusion of social media in their marketing plans, which will be the subject of future blog articles). Companies now realize that having a domain name that is the same as their company name or the name of one of their products is an extremely valuable part of establishing an Internet presence, marketing, research, product development and generating brand identification and loyalty. As described in a previous article, a company wishing to acquire a domain name must file an application with the appropriate agency. Before doing so, a search is done to see if their desired domain name is already taken.

When a company finds that the domain name corresponding to their corporate name or product trademark is owned by someone else, the company has the same options as with a standard potential trademark infringement case, i.e., 1) choose a different name or, 2) fight to obtain the domain name from its current owners.

Some well publicized examples of these types of domain names disputes are:

  • candyland.com: Both Hasbro and an adult entertainment provider desired the candyland.com domain name. Hasbro was too late to register the name itself, but it is never too late to sue (with certain exceptions). Currently, the domain name is now in the hands of Hasbro.
  • mcdonalds.com: This domain name was taken by an author from Wired magazine who was writing a story on the value of domain names. In his article, the author asked that people contact him at ronald@mcdonalds.com with suggestions of what to do with the domain name. In exchange for returning the domain name to McDonalds, the author convinced the company to make a charitable donation.
  • micros0ft.com: The company Zero Micro Software obtained a registration for micros0ft.com (with a zero in place of the second 'o'), but the registration was suspended after Microsoft filed a protest (not a surprise).
  • On a related note, it was a 12th grade Canadian boy named Mike Rowe who registered the domain mikerowesoft.com. Again, not surprisingly, Microsoft filed an lawsuit seeking to enjoin his use of the trademarked name. Microsoft was successful after settling the case for an xbox and Microsoft training.
  • mtv.com: The MTV domain name was originally taken by MTV video jockey Adam Curry. Although MTV originally showed little interest in the domain name or the Internet, when Adam Curry left MTV the company wanted to control the domain name. After a federal court action was brought, the dispute settled out of court.
  • peta.org: An organization entitled "People Eating Tasty Animals" obtained the peta.org domain name, much to the disgust of the better know People for the Ethical Treatment of Animals. This domain name was suspended, but as of May 2000 the domain name was still registered in the name of People Eating Tasty Animals.
  • roadrunner.com: When NSI threatened to suspend the roadrunner.com domain name after a protest by Warner Brothers, the New Mexico Internet access provider who was using the domain name filed suit to prevent the suspension. Although the access provider was able to prevent the suspension, a joint venture company involving Time Warner, MediaOne, Microsoft, Compaq, and Advance/Newhouse eventually obtained the domain name.
  • taiwan.com: The mainland China news organization Xinhua was allowed to register the domain name taiwan.com, much to the disgust of the government of Taiwan.
  • For more information regarding trademark or copyright please contact us directly.