Your business has a trademark, service mark, or brand which is important to the marketing of your goods or services. You find out one day that someone has registered a domain name that is the same or confusingly similar to your trademark. That domain name may be dirverting traffic from your website, or may be confusing your customers as to the source of your business.

What can you do? You can bring a relatively simple arbitration proceeding to cancel the domain or, better yet, have it transferred to you.
The Internet Corporation for Assigned Names and Numbers (ICANN), which oversees and sets the rules for domain names has issued policies and procedures that permit you to bring a written arbitration request to a qualified panel that will decide whether the domain has been wrongly registered and should be canceled or transffered to you.

What do I have to prove in my arbitration complaint? Simply put, there are three main things you have to prove:

1. the domain name is confusingly similar to your trademark;
2. the registrant of the domain name has no legitimate rights or interests in the domain, and
3. the domain name was registered in bad faith.

As to point 1, it is helpful if your trademark is registered in the US Patent and Trademark Office, and that you have actively used it to market or advertise your goods or services prior to the registration of the domain name. In addition, the arbitration panel will look to see how close the domain name is to your trademark or brand. The domain need not be identical to your mark. It is enough if it is confusingly similar.

As to point 2, the panel will look to see if the domain name holder has any legitimate interests in the domain. One item of proof in your favor is that the domain name holder offers no goods or services in connection with the domain, or if it is simply offerring the domain for sale on an auction site. Another is that a domain holder is “not commonly known” by the domain name.

As to point 3, it is in your favor if the domain name holder uses a privacy service to shield its identity from the public. Is is also in your favor if it offers the domain for sale in excess of its out of pocket costs for registering the domain. Bad faith can also be demonstrated by the passive holding of the domain name. For example, wherein domain name resolves to a web page that offers no bona fide goods or services.
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In conclusion, if someone has registered a domain name that conflicts with or even copies your brand, there is relatively cost effective way to have that domain name transferred to you, thus preventing the domain registrant from impinging on your business.

Joseph M. Manak, Esq.
jmanak-iplaw.com
joepatent77@gmail.com

This article ebeen prepared for general information purposes only to permit you to learn more about our firm, our services and the experience of our attorneys. The information presented is not legal advice, is not to be acted on as such, may not be current and is subject to change without notice.