"Squatting" on potential trademarks

[GawnFishin]

In rem jurisdiction is no mere legal technicality; it permits the trademark owner to obtain forfeiture, cancellation or transfer of the infringing domain name simply by filing the action against the domain name, as opposed to the cybersquatter itself. In rem jurisdiction is an important time and cost effective mechanism where the cybersquatter is either a “fly-by-night” that cannot be found or a foreign entity.

I just get the impression that the law is worded in such a way as to make it that if you are a “foreign entity” all a US business has to do to get their hands on a domain name is show that they now have a vested interest in the name. Whether or not you have the domain for purposes of speculation or just to use as email or even just as a scrapbook if a company claims I am squatting on their domain they can just take the domain. I couldn’t afford to mount a legal challenge to some company just going and claiming my domain by using this “In rem juridiction.”

I have had my domain name for six years and the name is interesting and unique and also memorable if a company decided that they really wanted it how could I stop them. I’m a private person in a foreign country who owns a domain name. What protection do I have and how do I know that in five years time some US company wont say hey nice name thank you we’ll have that now.

[GawnFishin]

My situation is that I have use a classic miss-spelling and phonetic pronunciation of some common words to come up with my domain name and registered (basement)business name in my country of residence. Very unique and too the best of my knowledge not trade marked but what is to stop someone trade marking the name and then just taking it from me?

And no at this point in time this is not the case at this point in time. I am only wondering, “what if?”.

[GawnFishin]

If you’re outside the U.S. and you want to avoid such a possibility, you’re better off using a domain name that’s considered to be located in your jurisdiction.

How is a domain considered to be in one country or another? .com .net or .org are these domains now considered to be US property?

[Acsenray]

What protection do I have and how do I know that in five years time some US company wont say hey nice name thank you we’ll have that now.

To some extent your concerns may be justified; to some extent you exhibit a bit of paranoia. I’ve tried to explain the legal standards here, but I don’t think you are really grasping them. I can respond “not true” to assertions like

… all a US business has to do to get their hands on a domain name is show that they now have a vested interest in the name. … if a company claims I am squatting on their domain they can just take the domain. … just going and claiming my domain by using this “In rem juridiction.” … in five years time some US company wont say hey nice name thank you we’ll have that now.

until I’m blue in the face but if you really don’t understand the law, there’s no point in my doing so. (By the way: not true, not rue, not true, not true).

If you are truly concerned about protecting your rights, there are some issues you might want to consider:

Most companies who are trying to get a domain name are going to go the route of the U.D.R.P. first, because it’s cheaper. Fortunately for you, U.D.R.P. proceedings are relatively inexpensive and they’re conducted by E-mail. It would behoove you to ensure that your contact information in the Whois database is current. Information on such proceedings are at http://www.icann.org/dndr/udrp/policy.htm.

2. In a U.D.R.P. proceeding, the complainant will have to show what I said above. It is not a case in which they merely have to “show that they have a vested interest in the name.” They have to show that you have no rights or legitimate interest in the domain name, and they have to show that you registered and used the domain in bad faith.

What is bad faith? According to the U.D.R.P. –

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

If after losing under the U.D.R.P. (which makes their case very poor) or in lieu of that, if they go the route of the A.C.P.A., similarly, they have to make a showing of bad faith (unless you’re using a “famous” mark, in which case, you’re in a worse position). What is bad faith under the A.C.P.A.? –

(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to –

(I) the trademark or other intellectual property rights of the person, if any, in the domain name;

(II) 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;

(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

(V) 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;

(VI) 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;

(VII) 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;

(VIII) 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

(IX) 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 ©(1) of section 43.

(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.

So it’s not just a cakewalk for the plaintiff here, either.

Well, you say, you still can’t afford to answer the charges and what if the plaintiff just outright lies in her complaint? For one thing, if there was a previous U.D.R.P. decision, you can bet the judge is going to take the arbitrator’s decision seriously, even though they aren’t binding.

And, what I said before – if you acquire property in a foreign country, you have to be prepared to defend it in court there. If you have a .com, .net, or .org domain name, then you are holding property in the United States. If you don’t want to risk the chance of losing it in a legal proceeding that you can’t afford to defend, then you’re better off getting a “local” domain name. That’s all there is to it.

[Walloon]

@12 parsecs from home

My situation is that I have use a classic miss-spelling and phonetic pronunciation of some common words to come up with my domain name and registered (basement)business name in my country of residence. Very unique and too the best of my knowledge not trade marked but what is to stop someone trade marking the name and then just taking it from me?

You seem to be overlooking one very basic legal principle in deciding mark infringement: Priority of use. Who had it first? Before a mark can be registered, research must be done to ascertain whether that mark, or a very similar one, is already in use.

I am unaware of any domain name ever being taken away by force from an owner who had priority of use to the mark. Rather, in such cases the domain name owner sells the domain name at a good price.

For instance, say for the fun of it you registered and used the domain name tweedledum.com. Then, a few years later, someone opened a chair of stores for baby clothing called Tweedledum. Their company’s lawyers discover that you already have a domain named tweedledum.com, which you have been using for several years before their business opened. They would like to expand their business to the Web, so they make you a handsome offer to buy the domain name from you. However, they would probably have little legal standing to in court to take the name forcibly from you, if you decided not to sell it.

[Acsenray]

How is a domain considered to be in one country or another? .com .net or .org are these domains now considered to be US property?

A domain name is located where the registrar or the registry is located. So a domain name could have more than one location. However, the registries for .com, .net, and .org are located in the United States; thus, wherever else they might be, they are located in the United States. They are not “U.S. property” but they are “property located in the U.S.,” if you can see the difference. Similarly, .uk domains are located in the United Kingdom, and so forth.