I am thinking about starting my own business. The domain name is Memorabilia.com. If I wanted to start my business and name it Memorabilia Inc (or LLC, etc.), and decide to trademark the name, am I entitled to the domain name? I contacted the owner of the domain name and was informed that I would need to pay them (price is $1.2 million) regardless of who controls the trademark. I had thought that whomever owns the trademark is legally the rightful owner, no matter what. Any idea if I am able to file a suit with ICANN, file a trademark infringement lawsuit or file a cybersquatting lawsuit? What are the qualifications or requirements needed to win a suit like this? I am curious what my options are here..
Quick answer: You will very likely not gain control over this domain name if you develop trademark rights in an identical or similar name as the preexisting domain name under either ICANN's mandatory arbitration or a federal cybersquatting lawsuit. Why? Because there is likely no requisite "bad faith" here. The general rule is that there will be no forced domain name transfer unless the domain name was registered in bad faith or the domain name is used in bad faith. Note here, because the domain name was registered before any trademark rights have arisen, the domain name registration by definition was not in bad faith. And statistically, when the domain name was registered without bad faith, one is less likely to see bad faith in use of the domain name.
Also note, if the goods and/or services you plan to associate with the proposed trademark name are too descriptive, you will not be permitted to register that proposed trademark name on the Principal Register - until you've acquired secondary meaning in the marketplace plus being listed in the Supplemental Register for five consecutive years. And unless you have your trademark attorney clear use of your proposed trademark name, adopting that proposed trademark name could expose you to trademark infringement liability to others with superior rights in confusingly similar marks.
If another person or entity owns a domain name, it is a property right that does not automatically transfer to another entity. You probably would be best served by speaking in person to a business attorney since your new enterprise will have multiple issues, including but not limited to intellectual property, taxes, proper business organization, etc. You are sorely naive and/or misinformed and could get yourself into trouble trying to DIY.
Although AVVO describes this site as providing free legal advice, it is really a simple Q&A forum. The volunteer attorneys provide general answers. No specific legal advice is given here and no attorney-client relationship is established. For precise direction and legal advice, please consult in person with an attorney in your area. Be sure to bring all relevant paperwork with you.
There are two places where you should make inquiries -- the Business Department in the Office of the Illinois Secretary of State can tell you if the corporate or LCC name you want to use is available. The second is an internet domain service (eg: Go Daddy), which can tell you if the internet address you seek is available. Please note that the domain name is the part after the dot. A memorabilia domain would be something like **.memorabilia.
If you can get what you need, then seek out an attorney who can advise you further.
Unlikely that you can start registering new trademarks as a method to take domain names from existing owners. Lots of people would be doing it already if it were that easy. Talk to qualified local intellectual property counsel about your situation.
I am not your lawyer unless we enter into an engagement agreement in writing. This is general information that is given for legal education only. It is not legal advice, and it may not work for your specific situation. I strongly encourage you to consult with a local lawyer to get legal advice and help with your specific situation at your earliest convenience. I am licensed to practice law in Arizona.
Besides the domain name issue (which your scenario will not allow you to claim;) There will be other questions you find as you seek to open an e-commerce web site. I have written a legal guide on this site with issues you will need to discuss with an Internet attorney. I have placed a link below for your convenience.
Sound legal advice as you start your business can save you thousands if you step on your foot.
This post is provided for general informational purposes only and is not intended to be legal advice specific to you. This general information is not a substitute for the advice of an attorney in your jurisdiction. The attorney client relationship is not established by this post.
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