If you have a dispute over a domain name, the courts have the authority to award ownership or control over a domain name just as they have this power over other types of property. In order to file litigation over a domain name, you must be prepared to present evidence as to why a domain name that is registered to another party should be cancelled or transferred to another party.
Lawsuits over domain names originally focused on trademark law, such as whether there was a likelihood of confusion or it was dilutive of a personal name (usually somebody famous). However, in 1999 Congress passed the Anticybersquatting Consumer Protection Act. The goal of the law was to prohibit individuals from registering domain names containing trademarks with no intention of creating a legitimate website, but rather with the intent to sell the domain name to the owner of the trademark. To take over a domain name, however, the party is required to prove that the holder of the domain name acted in “bad faith.”
For famous individuals, the Act allows them to file litigation against any other party who registers their name for the purpose of selling it for a profit. The more general part of the statute protects businesses from individuals who register a domain name that is the same or confusingly similar to the company’s existing trademark. Below are numerous factors the statute sets forth for courts to consider when deciding if the domain name was registered in bad faith:
- the trademark or other intellectual property rights of the person, if any, in the domain name;
- the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
- the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
- the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
- the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
- the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
- the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
- the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
- the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).
If you are interested in learning more about responding to opposition to your trademark application, contact the legal team at The Swenson Law Firm for assistance.