By Tikwiza Nkowane|www.amdlawgroup.com A federally protected trademark can be retained indefinitely if maintained in accordance with the laws. After going through the effort of obtaining federal protection of a Trademark,...
Originally posted 2016-09-07 10:10:17.
By Sophie Sun | Editor: Kristen Daly | www.amdlawgroup.com
One mistake that an investor may make during domain name registration is the registration of a trademark-infringing domain name. Such a domain name causes several questions to arise: what is the intent of the registrant at the time of registering that domain name? If the registrant registers a domain name and has good faith intent to create a website in one of those areas, does he or she have to worry about registering the domain name if it includes a trademark? In an interview between Michael Cyger and David Weslow, who specializes in domain name and intellectual property law, these questions are answered.
A trademark-infringing domain name can cause the owner to lose business and could confuse customers and clients. It could also lead to domain name transfer if the claimant wins the lawsuit along with a large sum of fee. Let’s take a closer look at the issues at hand:
- The intent of the registrant at the time of registering the domain name
The intent of the registrant would be regarded as one of bad faith if it serves as a means to receive a benefit from the trademark significance of that domain name. A similar situation arises if the registrant merely seeks to profit from the domain name registration by selling it. For example, if one attempts to register the domain name “Oracle.guru” in order to sell it back to Oracle, the intent behind the registration will be recognized as unlawful and Oracle may file an anti-cybersquatting lawsuit. Such behavior would violate both the UDRP (Uniform Domain-Name Dispute-Resolution Policy) and the URS (Uniform Rapid Suspension System) if this was a new gTLD. The registrant could also be subject to a lawsuit under the Anti-Cybersquatting Consumer Protection Act.
- The big deal behind registering a domain name
A domain name is subject to the UDRP. If a case brought under the UDRP was successful, the domain name would be transferred to the claimant or cancelled if there was a practical matter.
For example, if a registrant intends to register new top-level domains and, knowing how companies work, plans for including their content in order to sell the domains to them, there will be several ACPA lawsuits filed against him or her. In the end, the registrant would most likely lose the suit and be required to pay up to $1,000 or $3,000 per domain, along with attorney fees.
- The potential risk of registering a domain name that includes a trademark
It is important to distinguish the legal risks and potential cybersquatting claims relating to intent at the time of registration or use of the domain name from the potential other claims of trademark infringement that may be put forth. A cybersquatting claim would not relate to the act of registering or trafficking in the domain name; rather, it would relate to how it was used.
- The intention behind using the domain name: non-commercial manner or not
If a trademark-infringing domain name is used to illustrate real criticism of the trademark owner or if criticism serves as a secondary motive to the registrant’s primary intent to profit from the domain, its use may be regarded as a commercial manner. However, if there was no intent to include ads, sell the domain name to those companies who own the mentioned trademarks or monetize the site in some other manner, then its use would be regarded as non-commercial.
- Registration of a domain name that already exists in another country
Although country code registration does not have to follow the principles of UDRP, out of the 252 country codes, most have UDRP-like policies. Those who register domain names in other countries are still subject to claims through the local courts.
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