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Trademark Holder Not Entitled to Domain Name Registered Years Before

Startups in the process of selecting a company or product name are often frustrated to see that someone else, years ago, registered the .com version of their newly thought-of name. Similarly, companies that have acquired a trademark registration wonder whether they can use their crisp new registration certificate to stomp out someone else who has been using a domain name similar to the company’s new mark.

A recent case arising under the Uniform Domain Name Dispute Resolution Policy (UDRP for short) shows us that the earlier domain name registration is usually going to be on solid ground against a later-arriving trademark owner.

In the case of Arizona State Trailer Sales, Inc. d/b/a Little Dealer Little Prices RV v. World Wide RV, a National Arbitration Forum panelist denied the trademark owner’s cybersquatting claim against another company who had registered the domain name version of the trademark in 2006.

To be successful under the UDRP, the complainant would have had to show:

  • the domain name registered by the respondent was identical or confusingly similar to a trademark or service mark in which the complainant had rights;
  • the respondent had no rights or legitimate interests in respect of the domain name; and
  • the domain name had been registered and was being used in bad faith.

The complaint failed on the first of these three elements. The panel found that the requirement of being identical or confusingly similar “necessarily implies that Complainant’s rights must predate the registration of Registrant’s domain name.” Since the domain name in this case was registered years before, there was no relief to be had. The request to transfer the domain name was denied.

By Evan D. Brown, Attorney

Evan focuses on technology and intellectual property law. He maintains a law & technology focused blog called Internet Cases and is a Domain Name Panelist with the World Intellectual Property Organization deciding cases under the UDRP.

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Comments

True But... Jeff Ostrovsky  –  May 13, 2010 8:22 PM

I agree with the finding of the panel, but have successfully used the free utility located on http://www.IPinMYpants.Com to tell me what ELSE the registrant owns.  Sometimes, this is very revealing as to the registrant’s intent, for better or worse.

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