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Have you ever been involved in a domain name dispute?

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by Chris McElroy
September 23, 2008


Chris McElroy

Chris McElroy aka NameCritic has been involved in domain name appraisals, domain name disputes, and brokering domain names since 1995.

Visit the Chris McElroy aka NameCritic Blog here, to learn more about domain names.

Chris McElroy has written 2 articles for DomainInformer.
View all articles by Chris McElroy ...

A lot of people do not understand the relationship of trademarks and domain names, including most intellectual property attorneys. IP Attorneys BELIEVE they understand it, but some of the cases they file and some of the things they say in forums show a clear misunderstanding of domain names.

At one time, IP attorneys tried to get generic domain names banned altogether. Their argument was that it was unfair to big corporations that someone who paid a few dollars for a generic domain name could compete with them.

For instance. They said that it would be unfair that GM or Ford shelled out millions of dollars to advertise their cars, but someone could just pay $35 or less to register cars.com and still compete with those companies.

Fortunately, they lost that battle and generic domain names are legal. But that shows that IP attorneys did not have a clue about domain names.

What is a Domain Name anyway?

Your website is actually located at a numbered address, much like a phone number. Example; 255.32.01.255. Domain names were created so you do not have to remember a number when you want to go to a particular website.

They were NEVER meant to represent trademarks. It was NEVER the intent to associate domain names with trademarks or the commercial rights of corporations.

So, a domain name is more like a phone number. You've seen ads that say call 1-800-movingyou, 1-800-callmenow, etc. Domain names are similar since it can be represented by numbers that are associated with letters.

What is a Trademark?

A Trademark does not mean you own the words in the trademark. A trademark does not mean you own all of the uses of the words in your trademark.

When you apply for a trademark, you have to choose a classification for that trademark, such as; clothing, TV entertainment, beverages, etc. If granted a trademark, it grants you the right to use those words, in the order you registered them, in commerce, within the classification you chose.

That means two people can hold the same words as a trademark as long as each of them registered it in a different classification. So there could exist "Mumbo Jumbo" cookware and "Mumbo Jumbo" Guitars and neither would be in violation of the others trademark.

How do you violate someone's Trademark?

If you went out and registered mumbojumbo.com, you would not be violating the fictitious trademarks above. Neither of the two trademark holders own all rights to those two words.

However, if you sold cookware or guitars on a website at mumbojumbo.com, you would be in violation of their trademarks. If you even link to someone who sells cookware or guitars, you would still be in violation of those trademarks.

But if you taught magic tricks at mumbojumbo.com, you would not be in violation of either trademark. However, IP attorneys for those trademark owners may still try to force you to turn your domain name over to them.

What is Reverse Domain Name Hijacking?

That is when IP attorneys send emails out to people who have a domain name that is similar to their clients’ trademark and claim that you are in violation of their client's trademark. They try to get you to turn over the domain name to them by threatening to sue you.

They use scare tactics. The scary thing is that big corporations can afford to file these false legal actions and many domain name registrants feel they cannot afford to defend their domain names even though they have full rights to own the domain name in question.

So many registrants simply give them the domain name in question to avoid any legal fees. Reverse Domain Name Hijacking goes on all the time. It's worse than cyber squatting since these attorneys generally go after innocent generic domain name registrants that are not violating anyone's trademark under the law.

If you want to learn more about previous domain name disputes and decisions, you can visit The National Arbitration Forum here.

 

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Title: Great article September 28, 2008
Comment by Anand

Chris,

We're currently involved in a domain name dispute, and I found your guidance/ideas to be spot on. What makes our case more complicated is the fact that I'm from the USA (NYC) and the complainant is in India and the case has been filed in India as it is a .co.in domain name (Indian extension).

The key I think is that folks may try to bully you into giving up your domain name so folks should not be scared and should respond as long as they feel like they have a legitimate claim to the site. If, however, you were trying to squat on a legitimate trademark owners domain name hoping for a payout, I think that is probably a lost cause (just my opinion based on a lot of case law I read)

We're keeping folks updated about our current case via our website/blog @ http://www.stopdomainnamebullying.com.

Look forward to reading more and thanks again for the great article.

Regards,
Anand


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