Domain Name Disputes
Assisting trademark owners with domain name disputes in South Florida
In today’s Internet Age, practically every business will have an Internet presence through a domain name and website. The domain name may “refer” to an actual company such as www.HRBlock.com or www.Mcdonald’s.com or an actual product name such as www.Lipitor.com.
The domain name registrant needs to understand that the owner of registered trademark and/or service has the right to protect its mark(s). This right includes the right to take legal action if its mark is being used as a domain name by another person (individual, company, business entity, etc.). Most trademark owners will initially send a cease and desist letter to the registrant of the alleged offending domain name before commencing legal action.
Remember from the trademarks webpage, that trademark law focuses on the consumer. If your domain name has the potential of confusing the consumer into thinking the registered trademark holder is somehow affiliated with your website, the registered mark owner may bring infringement claims against you if you do not immediately comply with an initial cease and desist letter. Whether or not your domain name has the potential of confusing a consumer would be determined by a court determined according to trademark laws. It is important to understand that availability of a domain name should not be interpreted to mean that the domain name is “for the registering”.
Instead of initiating an actual trademark infringement lawsuit regarding the alleged offending domain name, trademark owners may instead use the Internet Corporation for Assigned Name and Numbers’ (ICANN) alternative dispute resolution (“ADR”) procedure known as the Uniform Domain Name Dispute because it is quick and generally much cheaper than a full-fledged lawsuit. Indeed, this particular ADR procedure has become the mark owner’s weapon of choice in the war against cyber-squatters.
Therefore, it is advisable that any person who is going to register a domain name first have a thorough trademark/service mark search conducted which includes a domain name search.
These days the selection of a domain name is generally part of the selection process of a company name, product; and/or service. Remember that the purpose of a thorough mark search is to: a) determine potential mark infringement problems with the proposed company, product, and/or service name (and domain name); and to b) maximize the possibility of obtaining federal registration of the proposed name through the USPTO.
Another important objective of any mark search is to help prevent a later situation where you spend considerable money on developing a business, product and/or service only to later face costly legal problems because of infringement problems. And a final, most important objective of any mark search is to allow you to base your business and products/services on marks which will have a strong chance of receiving “registration” approval by the USPTO. Remember that registered marks can be a very valuable business asset and any business involved in interstate commerce has the possibility of enjoying the valuable rights, including licensing and assignment rights, associated with the registered mark.
How We Can Help
As the foregoing should demonstrate, the start of a new business venture can entail a lot of issues. As both business law and intellectual property law attorneys, we have the ability to address the “big picture” of new business development based on the nature of your business to help ensure that your business will get off and running and thrive. One way for a business to thrive is to take proactive steps to prevent unpleasant and costly legal disputes down the road. If you are considering starting a new business, call us at (305) 279-4740 or contact us online for a FREE consultation.
