Trademarks are a defense against cybersquatters 3

Popular internet domain names are a hot commodity… and brands and business names are often used as internet domain names.  (for example: www.coca-cola.com and www.nike.com )

Businesses often seek to register and own their business names and brands as internet domain names; however, it’s not uncommon for cybersquatters to beat them to the punch and register internet domain name out from under them.  What can be done if this happens?  If the domain name purchased by the cybersquatter contains a trademark owned by another party, then there a good chance that the cybersquatter will be forced to surrender the domain name.   A cybersquatter can be forced to surrender a domain name if: 1) the cybersquatter who registered the name has no legitimate business interest in the name; 2) the domain name was registered in bad faith; and 3) the trademark owner’s trademark is confusingly similar to the registered domain.

If all three of these points can be proven, then the domain name can be cancelled or transferred to the trademark owner.

For more info on TRADEMARKS and Exclusive Use Rights –> http://t.co/llWyfhN; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

3 comments

  1. Dear Vanessa,
    to complement your excellent post, I’d like to add a comment I wrote recently during my practice, and concerning point no. 2 above (bad faith).

    Thank you and compliments for the work you do in the website!

    Giovanni Orsoni

    ::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::

    A recent decision given by the WIPO arbitration and mediation center covers extensively the concept of bad faith in the UDRP (Uniform Domain-Name Dispute-Resolution Policy).

    The Decision (WIPO Case No. D2010-0800 “FERRLECIT”, available here: http://wipo.int/amc/en/domains/search/text.jsp?case=D2010-0800) tackles in particular the cumulative requirement of registration and use in bad faith, as required by paragraph 4(a)(iii) of the UDRP.

    The factual background of the case covers a trademark owned by the claimant, and an identical domain name registered by the respondent while he had a distribution and trademark agreement granting him an exclusive licence. The WIPO Panel denied the complaint, stating that bad faith was not proved at the registration stage.

    However the most relevant part of the decision is in my view the dissenting opinion, where the panelist M. Scott Dohahey drafts a comprehensive overview of the historic background and discussion that led to the current formulation of § 4(a)(iii) UDRP, where the registrants interests of having “bad faith registration AND use” (cumulative requirement) prevailed on the trademark interests that unsuccessfully tried to push for “bad faith registration OR use” (alternative requirement).

    The panelist further analyzes recent case-law (e.g. the three OCTOGEN cases, the VILLE DE PARIS case and the TELSTRA one), arguing in the end that in his view “registration and use” should not be considered as a _binary_ concept (whereas this means that there must be proof of registration in bad faith and there must also be proof of use in bad faith), but rather as a _unitary_ concept, and thus one must determine whether under all the circumstances it can be said that respondent is acting in bad faith, and evidence of one of the elements may be considered proof of both the elements.

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