We provide a full range of copyright and trademark services to businesses and entrepreneurs, including application preparation, monitoring, assignments, change of ownership, portfolio management, renewal filings, and litigation.
We provide a full range of copyright and trademark services to businesses and entrepreneurs, including but not limited to trademark application preparation, monitoring, assignments, change of ownership, portfolio management, renewal filings, litigation, trademark infringement involving domain names, and more.
One of the areas we regularly work in regarding domain name disputes is “cybersquatting,” whereby another entity uses a domain name for profit via third-party buying or registering the domain name that uses your trademark or business name. When it comes to understanding whether a conflict exists with respect to domain name trademark issues, usually only those domains that are likely to confuse customers will lead to a dispute. In the event of a conflict, the first commercial user of a trademark owns it, while the later user may have to pay the owner monetary damages.
However, in order to be protected, a trademark must be distinct (for example, an owner cannot lay claim to a domain name that simply uses geographic names or generic terms). Typically, if a name is registered with the U.S. Patent and Trademark Office, it is distinctive. The best way to ensure that you have a domain name that will not lead to conflict is to work with an experienced domain name trademark services attorney so as to ensure that thorough research has been done.
The Anti-Cybersquatting Consumer Protection Act
If there is a conflict, one of your options is to file litigation under the Anti-Cybersquatting Consumer Protection Act in federal court, whereby our attorneys can help you obtain a court order to prove that the offender owns a trademark that is the same or confusingly similar to yours, that the offending party does not have a legitimate right or interest in that name, and that the domain was registered and used in bad faith. A common defense that we see to these allegations is that an entity registered a domain name in good faith and without the intent of selling it back to the trademark owner.
The Internet Corporation of Assigned Names and Numbers and The Uniform Domain Name Dispute Resolution Policy
Another option is to work with your attorney to request that the domain name be transferred to you by using the Internet Corporation of Assigned Names and Numbers (ICANN). This is where the Uniform Domain Name Dispute Resolution Policy (UDRP) is relevant as the international policy governing the resolution of these types of disputes. If you prevail under ICANN, pursuant to the UDRP, the domain name is transferred or cancelled. This process is generally more cost-effective than filing suit under the aforementioned Consumer Protection Act.
Contact Our Trademark Services Attorneys to Find Out More
ESQwire provides the very best in internet intellectual legal advice and representation. We provide free consultations to discuss your options with you and help ensure that you are protected. Contact us today to schedule a consultation and find out more.
Since 1994, our attorneys have hundreds of dispute victories and have helped establish internationally-recognized legal precedent.