trademark domain name – Domain Name Rights Can Be Tied Directly to Trademark Rights
The age-old rule that domain name registration is on a first come-first served basis contains one extremely important exception. That exception was created by anticybersquatting laws, such as the Lanham Act's Anticybersquatting Consumer Protection Act (ACPA). In addition, ICANN has propagated policy and rules under the UDRP that make domain name registration actionable cybersquatting if particular elements are met. Almost every day, I receive a call from a prospective client with the question: "Am I being squatted on?". My typical answer is it depends, and this answer is not meant to increase the likelihood of client sign-up or to generate fees but rather it truly depends upon the facts and circumstances. Determining rights in a domain name requires an analysis based upon trademark law.
The first issue to be addressed is the extent of the trademark rights, if any. An entity that uses a distinctive mark in interstate commerce has the right to use that particular mark in connection with the goods or services to which it pertains. That entity would have trademark rights. Therefore, identifying whether trademark rights exist at all is critical to any cybersquatting analysis. In fact, the first element under the ACPA and the UDRP policy requires trademark rights. These trademark rights do not necessarily have to based upon a trademark registration with a governmental entity such as the United States Patent and Trademark Office, but rather can be based upon a prior use of a distinctive, rather than generic or merely descriptive, mark in interstate commerce. This determination in and of itself is an extremely fact-dependent issue, and it is particularly less clear when dealing with descriptive marks, which are only entitled to protection if they have achieved acquired distinctiveness through secondary meaning. When determining whether a mark has acquired distinctiveness, one must look at when the first use of the mark occurred, how long the mark has been used, to what extent the mark has been advertised and marketed, to what extent consumers have come to recognize the entity as the source of the goods or services associated with that mark, and related matters. Assuming you can establish trademark rights prior to the registration of the domain name, you may be in a position to assert cybersquatting claims.
That said, depending upon the strength of the mark, how the current registrant is using the domain, and other facts can provide additional support for a cybersquatting claim. Moreover, in cases where the cause of action for cybersquatting is not entirely certain, there may be leverage items worth employing that could cause the apparent cybersquatter to no longer wish to retain the domain name. For example, placing the domain name owner on notice of the trademark owner's claim to rights in the domain by notifying the domain name owner of an affirmative obligation to make any potential purchaser aware of the same may entice the domain name owner to transfer the domain outright, consider negotiating a transfer for renumeration, or lead to other information that will be valuable in assessing what next steps are required.
Ultimately, other than in a case of hacking or domain name conversion, trademark rights are a necessary prerequisite to any cybersquatting claim. Therefore, business owners are well-served to ensure proper establishment of a trademark, use of a trademark, registration of a trademark, monitoring of a trademark and enforcement of a trademark in order to be in the best position should a domain name issue arise. I've said it before and I'll say it again, absent trademark rights, you do not have a cause of action for cybersquatting. That being said, do not overlook the fact that trademark rights exist under common law, as well as registration with a governmental entity, and an experienced trademark attorney can help you identify what rights you have and the extent to which you may be able to enforce them in a cybersquatting action.
Brian A. Hall is an attorney and partner of Traverse Legal, PLC, a law firm specializing in complex litigation, intellectual property matters, internet law and trademark matters. To learn more about trademark rights in descriptive trademarks, you should contact a trademark lawyer with experience in domain name trademarks.
Ok so 3 more posts today that I've dug up - I'm an information JUNKIE on this stuff lately. Give em a browse and let me know what ya reckon. They're just from a few different sites I've been surfing lately that are generally good for information like this...
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