|
DOMAIN NAME DISPUTES
Whether you are a trademark owner being ripped off
by a cybersquatter or you have received a cease-and-desist letter from a
trademark owner, the following methods may be employed to gain control
of a disputed domain name.
There are two methods for a trademark owner to
obtain rights to a domain name that is the same as the owner's federally
registered trademark: administrative and judicial. The administrative
proceeding is conducted before one of the administrative
dispute-resolution service providers. In a complaint to the provider,
the trademark owner must assert and prove that:
1) the domain name is identical or confusingly
similar to the trademark; AND
2) the current owner of the domain name has no rights or legitimate
interests in respect of the domain name; AND
3) the domain name has been registered and is being used in "bad faith."
The judicial action involves filing a suit under the
Anticybersquatting Consumer Protection Act in a federal court. The Act
lists several factors in determining whether the domain name was
registered in "bad faith." Factors to be considered include: does the
domain name holder have trademark rights in the domain name; has the
domain name holder made use of the domain name in connection with a bona
fide sale of goods or services; has the domain name holder used the mark
in a bona fide noncommercial or fair use way at a web site accessible at
the domain name; is the domain name the legal name of the domain name
holder; is the domain name holder attempting to divert consumers from
the trademark owner's website in a confusing way, either for commercial
gain or in an attempt to tarnish or disparage the trademark; has an
offer for sale for financial gain been made by the domain name holder
without having any intent to use the name with the sale of goods or
services; has the domain name holder behaved in a pattern of registering
and selling domain names without intending to use them to sale goods or
services; did the domain name holder provide false information when
applying for the registration; has the domain name holder registered
domain names of other parties trademarks; and how distinctive and famous
are the trademarks? |
