A domain name is nothing but an entry in a database that corresponds to an internet protocol address. Domain name databases are operated by private companies that have contractually agreed to operate in a certain manner. However, owning a domain name does not give you any trademark rights in that domain. It is only the good faith operation of a website that uses a given trademark that gives rise to trademark rights.
As many have found to their dismay, domain names are international in scope and are not closely tied to national trademark registries. Trademarks are registered only for specific goods and services; domain names are not. But, if you own a trademark and another party registers a domain name in bad faith that includes that trademark (e.g., for the purpose of diverting your customers or reselling the domain to you at a profit), then your trademark rights are very helpful in showing that you have a legitimate right to use that domain name. But if another company with a similar name, but operating in a different industry, is using a domain name that you want, you have little legal recourse. By recognizing the differences between trademarks, domain names and trade names, you can plan ahead to check the availability of what you need, register what you use, and understand your legal rights in relation to each.
The best alternative to pursuing a domain name dispute through the courts is to take advantage of the policy and procedure created by ICANN and used by all accredited registrars. Under this policy, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name.
Domain name challenges are tough to win, however, as the trademark owner has to be able to establish “bad faith” to prevail, and have the domain name either cancelled or transferred to it.
Click the link below to read a decision, in which the NAF (National Arbitration Forum) ordered two domain names transferred to my client, as I was able to convince the Board that there was clear bad faith and that the domain name holder had clearly intended to damage my client’s business by diverting consumers to its website and selling an inferior product, and by playing on the confusion created by operating websites that contained my client’s registered trademark.
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