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How can we protect a domain name and trademark internationally?

Registering a trademark and using the ICANN Uniform Domain-Name Dispute-Resolution Policy to acquire an already registered domain name?

  • Could one register a trademark and use the ICANN Uniform Domain-Name Dispute-Resolution Policy to acquire an already registered domain name? In this question the use of the name "SpeedNet" is for the purposes of the example. For instance, if one had a website called speednet.co.uk and another company in, for instance, Brazil was called speednet, and was using speednet.com domain would it be possible for someone to register the trademark SpeedNet in the US (assuming it is not already registered/has never been registered before) and then use the Uniform Domain-Name Dispute-Resolution Policy to aquire the .com domain name?

  • Answer:

    Unlikely, as you're essentially trying to steal a domain name from someone else who has a legitimate right to use it. I'm not a lawyer, but reading through the http://www.icann.org/en/udrp/udrp-policy-24oct99.htm as a layman, if I owned the domain name and was operating as a business, and you challenged me over my right to use the domain name as per your scenario, I would use Section 4.c to defend my right to the domain name: "Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;" My understanding of this is that if other individuals, businesses or organisations have been using the domain name to offer a service, even without a trademark, and can prove it, then they have a legitimate right to use the domain name and can keep it.

samengland at Ask.Metafilter.Com Visit the source

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In order to claim the domain via UDRP you'd have to prove bad faith on the part of the other party, and that would be pretty much impossible in this case if the company who registered the .com domain has a company by the same name.

Rhomboid

There could also be two companies within the UK that had exactly the same name trademarked nationally in different trades (Apple (records) / Apple (computers) is the classic example) but which I would guess could not take domain names away from each other on that basis, so the same situation might also exist internationally.

XMLicious

My company tried to do this; it didn't work. Lemme find the decision... "Paragraph 4(a) of the Policy requires that the Complainant must prove each of the follow three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent 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." In your frinstance, neither 2 or 3 is satisfied.

punchtothehead

Just echoing what everyone has said above: I've been on the filing side of quite a few UDRP decisions, and if the domain was registered before you got the trademark, there is absolutely no chance they will rule in your favor.

SpiffyRob

A relative went through a domain-name buying spree back in the 90s. One of the names they registered was a clever (and now reasonably well known) name playing on the 'e' theme. A few years later an online company was registered with that name and sued my relative for the domain. As the relo registered the domain before the company was formed, the company discovered in court that they had no claim. They ended up buying it for a low five-figure sum, which was immediately turned into an interest free loan to me for the deposit on my first home.

Kerasia

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