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Domain Name Disputes

A domain name is your identity on the internet, and increasingly more so in real world too. One just has to look at companies that only operate over the internet, such as Amazon.com. As more people and companies look to forge an online presence, disputes over domain names are more likely to occur.

Early domain name disputes happened with big corporations. Corporations that took longer to get onto the web would find the corresponding domain name was already taken. This sometimes resulted in complaints and lawsuits by these corporations to try and get these domain names. Before December 1999, it was fairly easy for the owners of trademarks to take back similar domains from whoever registered the domain.

These days most of these big corporations already have their domain names, and so many of the domain name disputes occur with smaller companies and individuals. A company that was local to one area may have the same or similar name to another local company in another part of the country. If they decide to give their business a website, they may find themselves wanting the same domain name.

Obviously a domain name can’t be registered twice, so there is a conflict. One may decide to use an alternate domain name instead, possibly a .net instead of a .com. In this case, the problem is resolved. However, the one business that missed out on the domain name may wish to try further steps to get the particular domain.

One option would be to try and buy the domain from the current owner. It would then be between the two companies to decide on a price etc. A problem may occur if a price can’t be negotiated or the domain name owner refuses to sell the domain at all. Then there is a domain name dispute.

For those of you with your own domain names, you can rest a little easier knowing that the policy regarding domain name disputes has changed since 1999, and owning a trademark name no longer necessarily gave rights to a domain name. The policy states that a trademark owner must be able to show the following three things:

  1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered domain name.
  2. that the party that registered the domain name has no legitimate right or interest in the domain name.
  3. that the domain name was registered and used in bad faith.

If the trademark owner is unable to prove all three of these points, then the domain name will not be cancelled or transferred.

There are several ways that a domain name owner can prove a legitimate right to a domain name. This includes the following:

  • use or preparations to use the domain name in connection with a legitimate offering of goods or services prior to any notice of the dispute.
  • that the domain name owner has been commonly known by the second level domain name.
  • that the domain name owner is making legitimate noncommercial or fair use of the domain name without intent of (i) commercial gain, (ii) misleadingly diverting consumers or (iii) tarnishing the trademark at issue.

So basically, if you are using a domain name for legitimate purpose, such as it is the name of your business or a product of your company, as long as you register the domain first, you own it and no one can take it from you.

The policy can be read in more detail here.

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