Domain Name and Trademark Dispute

Domain names and trademarks are related, but not the same thing. The rights derived from each are very different. Trademark rights flow from use of a mark for goods or services in interstate commerce or within a state’s boundary. Domain name rights are derived by way of a domain name owner’s contract with a registrar. Although a trademark owner has common law, federal or state rights to particular terms that constitutes their mark or trade name, it does not necessarily translate that this owner, above all others, have rights to a domain name consisting of the trademark owners terms.

Companies that advertise extensively and have marks that are recognized by the consuming public may possess substantial rights to a mark because a court may define it as “famous.” A company having a “famous” mark may argue that the use of a domain name incorporating that company’s famous term(s) may confuse the consuming public as to whether that particular web site is associated with the “famous” company.

However, no entity has a ‘right in gross,’ all rights to the exclusion of all others, to any term. Even though a mark is deemed “famous,” the company having the “famous” mark rights, may not always prevail. For instance, a Canadian graphic designer / illustrator, Arand Ramnath Mani or A.R.Mani, registered the domain and the famous fashion designer Giorgio Armani was denied the transfer of that domain.

Disputes relating to domain names may be resolved either under rules developed by the Internet Corporation for Assigned Names and Numbers (ICANN) or under the laws followed by the courts of any country. In the United States the Anti cybersquatting Consumer Protection Act (ACPA) is codified as 15 U.S.C. § 1125(d)(1) which authorizes civil actions to be filed as an in rem action or an action over the domain name itself, “in the judicial district in which the domain name registrar, domain name as registry, or other domain name authority that registered or assigned the domain name is located .” Another statute, codified as 15 U.S.C. § 1114, allows a person to defend against an “over reaching trademark owner” by bringing an action for reverse domain name hijacking.

If one brings an action in the ICANN forum, the results of the action most probably will turn on the fact of whether there was a good faith registration of the domain name and there was no intention by the registrant to trade off the goodwill of the other company. If one brings an action in the United States federal court based on the previously identified statutes, or pursuant to other elements of trademark law, the most important factor that is considered is whether there is or will likely be consumer confusion.

 

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