Someone is using our Trademarked name as there URL and domain name

[kfeldmann]

Hello,

I work for a company in New York City and have found that some one is using a registered trade marked name of the company as there URL and domain name to make a profit off it by setting it up as an affiliate marketing page. We have had this name trade marked much longer than this page has been in existence, and in fact I believe at one time we owned the domain but when there was a change in personnel the registration lapsed. What courses of action do we have to get this domain name back?

Thanks!

 

[Michael Wechsler]

I work for a company in New York City and have found that some one is using a registered trade marked name of the company as there URL and domain name to make a profit off it by setting it up as an affiliate marketing page. We have had this name trade marked much longer than this page has been in existence, and in fact I believe at one time we owned the domain but when there was a change in personnel the registration lapsed. What courses of action do we have to get this domain name back?

Is this company trying to sell products in the same industry as the mark holder? For example, VERYEZEARS is a mark for headphones and someone bought veryezears.com and is putting up affiliate links to make money referring people to electronic stores who are interested in buying headphones.

The short answer is that you very well could have a right to the domain name, whether or not you used to have it, since the registrant is using the domain in violation of your trademark. If the domain was used by an ear doctor as a personal website, you might have a problem. The answer is fact specific and only a lawyer will be able to give you an idea as to whether or not a case exists.

I was successful in prosecuting one of these cases with the World Intellectual Property Organization (WIPO), which acts as an arbitration panel for domain name dispute cases. The poacher was doing much of what I described and we were able to win our case based upon a violation in the "Uniform Dispute Resolution Policy" which is a policy that everyone agrees to when buying a domain. Here's an excerpt from the WIPO case that explains what you need to prove regarding the defendant/respondent:

Paragraph 4(a) of the UDRP directs that the Complainant must prove each of the following: (1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (2) that the respondent has no rights or legitimate interests in respect of the domain name; and, (3) the domain name has been registered and used in bad faith.


Will your case get this far? Maybe not? The owner might be willing to settle quickly. Sometimes a good lawyer can help you obtain a settlement without needing to spend money going to arbitration -- it is costly. If you need help, just let us know!