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Can an Internet domain name registration be lost by failing to file for federal trademark?

Pittsburgh, PA |

Person/business A registers Internet domain name but does not use it immediately in business nor files for a federal trademark on the name. At a later point in time, before A ever uses the name in business, B comes and uses the name (or a very closely related name) in connection with business activity and also files for a federal trademark on the name. Does B have any legal remedies that could force A to abandon the Internet domain name ownership?

Attorney Answers 4

Posted

Putting facts on the hypothetical helps.

Person A registers oofygoofy.com but never publishes a site at that domain nor uses Oofy Goofy as a trademark. Person B begins to use Oofy Goofy as a trademark. Person B also wants to own and use oofygoofy.com. Is there some law that compels Person A to transfer the domain name registration to Person B?

Not under those facts.

Person A simply owns the registration. While the Anticybersquatting Consumer Protection Act [the "ACPA"] does make it unlawful simply to "register" -- not register AND use -- in bad faith a domain name that serves as someone else's trademark, in this case there was no Oofy Goofy trademark in existence when Person A registered the oofygoofy.com domain name. So there's no ACPA claim.

And ICANN's Uniform Dispute Resolution Proceeding [the "UDRP"] rules require that the alleged cybersquatter both register AND use the domain name in bad faith before the registration for that domain name can be involuntarily transferred to the trademark owner. So there's no UDRP claim.

However, two situations would change this analysis. First, if Person A re-registers oofygoofy.com after Person B develops trademark rights in Oofy Goofy and Person A is aware of those trademark rights then a decent argument can be made that the re-registration was in bad faith and violates the ACPA. This argument was rejected by one appeals court [see the GoPets case linked-to below] but it may prevail when another court looks at the matter.

Second, if Person A publishes a website at oofygoofy.com and the material shown on that website creates a likelihood of confusion with, or disparages, Person B or his products then Person B would have a claim under both traditional trademark infringement law and the ACPA.

You should discuss all this with your own trademark attorney. Good luck.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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Gerry J. Elman

Gerry J. Elman

Posted

Daniel- Excellent discussion.

Posted

Yes. B's domain name has been commercially used and A's domain name has no use. B is now a senior user and if B has a trademark registration then it can sue A for cyber squatting and other trademark violations. Failure to use a mark or a domain name weakens ones rights.

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Jon Kenneth Perala

Jon Kenneth Perala

Posted

I have to disagree in part. It could be trademark infringement if he later uses the domain name but not cybersquatting since the domain was registered before the mark became distinctive. A can legally sell the domain to B for a fair price.

Posted

Under the hypothetical you describe it is possible but unlikely that the domain registration might be lost in an adversarial situation. This would be when the registrant is merely squatting on the domain name, hoping to profit by selling the registration later on.

This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA www.elman.com

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Posted

The domain registration won't be lost MERELY for failing to register a substantially similar trademark.

However, as you rightly suggest, certain related risks DO exist. For example, if someone else begins to actually use in commerce and/or registers a mark which is "confusingly similar" to your domain name, they might then be able to assert a trademark infringement or similar claim against you, or to commence an administrative ICANN proceeding to force you to turn over the domain name ot them (though typically a successful ICANN proceeding would require some showing roughly analogous to fraudulent intent, or at least that you are an established and notorious cybersquatter).

Note that if you had been using a word mark substantially identical to your domain name continuously in commerce prior to the third party's use and/or filing, you might well have already established common law rights in the mark, such that the more recent user/filer would not be able to make you cease and desist (though you might find it difficult to expand into other regions/markets). However, even this could be subject to an anti-dilution argument, e.g. if a "famous" mark were involved.

There are a number of other wrinkles, defenses, and defenses-to-those-defenses, which might or might not apply in your particular circumstances, but which are beyond the scope of a quick chat board response.

Kind regards,
Terry L. Thomas
terry@thomaslegal.net
(650) 793 - 7129

THIS POST DOES NOT CONSTITUTE LEGAL ADVICE, DOES NOT IMPLY ANY ATTORNEY-CLIENT RELATIONSHIP, AND IS PROVIDED FOR GENERAL INFORMATIONAL PURPOSES ONLY.

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