If you find yourself in a dispute over a domain name, the best alternative to pursuing the dispute through the courts is to take advantage of the domain name dispute policies that have been developed by ICANN.
Currently the preexisting non-court resolution policy has now been replaced with a Uniform Domain Name Dispute Resolution Policy created by ICANN and used by all accredited registrars. Under this new policy, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name. In order to prevail, the trademark owner must show:
1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
3. that the domain name was registered and used in bad faith.
If the trademark owner successfully proves all three points in the administrative proceeding, then the domain name can either be cancelled or transferred to the prevailing trademark owner. If the trademark owner fails to prove one of these points, the administrative panel will not cancel nor transfer the domain name.
When a dispute occurs over a domain name, such as those described in earlier articles, the parties can always turn to the courts. While courts and judges have the authority to award control and ownership over domain names (just as they have authority to award control and ownership over any other property), the judicial process is slow and costly. Consequently, many parties seek to avoid the courts and turn to the domain name dispute policies of the domain name registrars. Refer to later articles for additional information regarding these policies.
Companies that bring a court action must present valid legal arguments on why a domain name registered to someone else should be canceled or transferred to an organization who wasn't quick enough to register the name first.
These arguments have been traditionally based on trademark law or dilution law (which are discussed in other articles on the TMRoe.com website). It has been difficult to present a strong case under the traditional principals of trademark law, especially when the party seeking to obtain a domain name either could not prove a likelihood of confusion (which is required under trademark law) or was a famous individual who never technically established trademark rights in...
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...
To register a second level domain name under a top-level domain, a request must be made to an organization that has the power to assign names for that top level domain. For instance, The US Domain Registry administers the registration of second level domain names under the .US top level domain.
Prior to December 1999, this responsibility for the registration of second level domain names for the most popular top level domains, including .COM, .NET, and .ORG fell on Network Solutions Inc ("NSI"). As the vast majority of domain names are under one of these top level domains Network Solutions wished to avoid having to be the arbitrator between two parties who both desire the same domain name, so, NSI decided to simply adopt a first come, first serve arrangement with respect to domain names. Under this scheme, NSI would not question an applicant's right to have a particular domain name. If the domain name was available, the applicant was granted the name.
As of December 1999, the ability to register .COM, .NET, and .ORG domain names was spread out among many registrars. These registrars are accredited by The Internet Corporation for Assigned Names and Numbers ("ICANN"), a non-profit corporation formed specifically to control Internet...
Domain names are, in basic terms, the addresses of websites located on the Internet. Just like the address of a residence a domain name acts, as the address, necessary to locate a particular website on the Internet. E-mail is sent and web pages are found through the use of domain names.
As an example, the web address for the Facebook website is www.facebook.com, while Mark Zuckerberg might have an e-mail address such as firstname.lastname@example.org (both using the "facebook.com" domain name). Without the domain name, a computer would not know where to look for a particular web page, and e-mail routers would not be able to send e-mail to a particular person. But, domain names are much more than just addresses, they are often trademarks and are usually closely associated with a particular product or service.
Domain names are divided into a sliding scale of importance. The top level of the scale appears after the last dot ('.') in a domain name. In "facebook.com", the top level domain name is .COM. The .COM name is the most common (and most sought) top level domain name, and is used to indicate that the domain name is owned by a commercial enterprise. Other common top level domain names include .ORG (for non-profit organizations), .NET (for...
This is the first in a series of articles regarding domain names and trademark disputes relating to them.
What is a domain name?
A domain name is the address of a web site that is intended to be easily identifiable and easy to remember, such as yahoo.com, or google.com or tmroe.com. These user friendly addresses for websites help connect computers, and people, on the Internet. Because they are easy to remember and use, domain names have become business identifiers and, increasingly, even trademarks themselves, such as amazon.com. By using existing trademarks for domain names, sony.com, for example, businesses attract potential customers to their websites.
What is the nature of domain name disputes?
Domain name disputes arise in large part from cybersquatting, which involves the preemptive registration of trademarks by third parties as domain names. Cybersquatters exploit the first come, first served nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection. Since registration of domain names is relatively simple and inexpensive, less than US$10 in most cases, cybersquatters often register hundreds of such names as domain names.
The Auburn Hills automaker sued the owners of Pure Detroit earlier this month, accusing the retailer of using the automaker's trademarked "Imported from Detroit" tagline on a variety of apparel at Pure Detroitâs shops. Made popular by its Super Bowl XLV advertisement promoting the 2011 Chrysler 200 that featured rapper Eminem, the American car manufacturer has sued a Detroit retailer, Pure Detroit, to stop it from selling t-shirts displaying the phrase.
Chrysler has asked a federal judge to order the Pure Detroit stores not to use the âImported from Detroitâ slogan while the court sorts out a lawsuit filed by the automaker over the three-word tagline. In a motion filed to stop Pure Detroit stores from selling the shirts, Chrysler cited a likelihood that the public would be confused by Pure Detroitâs use of its mark. Chrysler has registered the trademark in a number of classes; most obviously in International Class 12 (motor vehicles), but also in classes 6, 9, 14, 16, 18, 21, 25, 28, 34 and 35âfrom key chains to eyewear, to video games, to clothing and more. Pure Detroit has responded by claiming that Chrysler cannot trademark a descriptive phrase.
According to a motion filed Friday by Chrysler attorneys, âthe issuance of a...
In honor of April Fools Day, I wanted to write about a story that popped up last year that is certainly humorous but also brings a very important issue to light. As part of an April Fools prank, the people at ThinkGeek.com posted an ad for Canned Unicorn Meat, referring to it as the ânew white meat.â The ad also describes different cuts of the unicorn comprising such things as âstars, sunshine, magic, giggles and superglue.â
Now I hate to burst anyoneâs bubble out there, but this is a fake product. Despite what your mother or father told you, unicorns do not exist. (However, when they did exist, I understand that they were very good with french fries and broccoli).
On the other hand, what does exist and what ThinkGeek.com actually received was a 12 page cease and desist letter from the venerable firm of Faegre and Benson, on behalf of the National Pork Board.
The fact that unicorns do not exist might have given some people a clue, even those at the National Pork Board, that ThinkGeek's sale of canned unicorn meat might be a joke. The other thing that might have sent a small smoke signal might have been the fact that this fine product was being offered on April 1.
Still, the National Pork Board remained unamused, particularly...
Brand abuse does not, necessarily, mean counterfeiting. Trademark infringement can be equally damaging. Goodwill and reputation associated with the products and services of your company can tempt others into cashing in.
Unfortunately, there is no worldwide registration of trademarks. With rare exceptions, trademarks must be registered on a country-by country basis. Generally, the person registering the trademark should consider registering the trademarks as soon as possible in every jurisdiction considered for possible expansion.
In almost every legal jurisdiction in the world, there are very significant benefits that flow from trademark registration. With some limited exceptions for prior users in a number of countries, trademark registration will usually provide the registering party with the exclusive right to use the trademark in a particular jurisdiction for the goods or services covered by the registration.
Trademark offices in many countries do not perform an examination for prior registrations, and in those that do, the process is not always accurate. Furthermore, no country will search for or cite the rights of prior users. However, we need not look solely, to other countries to illustrate this problem. It also appears...
Imagine, large boxes filled with new product sitting in a home office, now imagine them never leaving.
This is an all to real and frequent example of how trademark disputes can effectively shut a small business down. Small businesses traditionally, put the lion share of their capital into the product and administrative aspects of their new business. However, ignoring the implications of a potential trademark infringement lawsuit could be disastrous.
If a company puts all of their capital into developing a certain brand name and that brand name just so happens to belong to the owner of a different company, this is the textbook example of trademark infringement, and can cause a business to come to a screeching halt.
Occasionally, I hear from a client (who initially filed their trademark application themselves) "I have a product, but I can't do anything with it. We received a cease and desist letter which said that if we use it [the trademark], we could be in real trouble."
After meeting the minimum filing requirements and receiving approval from a trademark-examining attorney, the new client is sent a notice of publication by the US Patent and Trademark Office. Thereafter, the published trademark is opposed during the 30-days...