If you own a trademark, can bring an action to get the domain name that someone else owns?
If you register a trademark, and someone else already has the trademarked word as a domain name (theword+.com) can you file an action to get the domain name?
Does it matter that the domain name owner has registered his domain name before you registered your trademark?
(I know it looks like I'm looking for legal advice but I juest need to get an idea about the situation - I'm a law student myself.)
Answer:
Stiggo is correct.
The standard, under the Uniform Domain Name Dispute system, says that if one person holds a domain in bad faith, or for purposes of trademark infringement, the lawful trademark holder may sue for transfer of ownership.
Good faith (i.e. lack of bad faith) is defined as having a valid reason for having the domain that has nothing to do with the other person's trademark (i.e. not in competition) and that the reason for having the domain name (or comparable mark) arose early enough relative to the other person's trademark usage.
For example, say a company has been in existence since the 1970s, using the trademark "micro soft bristles" for it's line of brooms and brushes. That trademark was registered in the 1970s, and has been in use since. In 2005, that company launches a website "microsoftbristles.com"
Our favorite software vendor would not be able to show bad faith, because the brush company has been using the domain name (minus the ".com") as a trademark for 30 years, since at or before the time Microsoft (the software company) came onto the scene. That usage of their own trademark in a non-competing industry, despite being similar to someone else's trademark in a different industry, is evidence of their good faith usage.
Another example. Someone registered "panavision.com" and set up a web-cam showing scenes from Pana, Illinois. The trademark court ruled that the person did not have a good faith basis, since he had no other link to the domain name than the association with the town, which happened after registration making it look like a cover story.
That's a place to start. Your law school library will have other examples of trademark actions and the actual elements and factors used by the dispute resolution courts.
If they only have registered the domain name in order to prevent you from using it, then yes, under cybersquatting laws, you can go after them to get it. If, however, you own the name in one field, but it is usable in another, and they are using it legitimately, then you will have a harder time.
Lets say I had www.coke.com, Coca Cola does have an avenue that they can pursue to get that domain from me if it is their registered trademark. Stealing trademarked domain names is called squatting, and it is illegal but in most cases the domain owner is forced to turn it over to the trademark owner at the cost of what the owner paid for it.
Yes, you can file an action, but only if they took the domain in order to prevent you from using it, NOT if they are using it for a legitimate purpose.
I don't think it matters if he took it to keep you from using it or not. The fact is he had it before you registered your trademark. That falls under prior use and you don't have any right to it.
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