How to Win Domain Lawsuits
Monte: Right. And, you know, it’s important, we try to, you know, emphasize the three things that you have to prove, that a company would have to prove to get a domain away from you, or that you have to prove when you’re trying to get a domain away from somebody. Can you walk through those real quick?
Howard: Well, obviously, the first thing is that you have a trademark, and that you have a right to the name as a plaintiff. Number two, you have to be able to prove that the respondent’s domain is confusing similar or the same as your trademark name, and number three, you have to prove that it was registered and used in bad trade.
Monte: Right.
Howard: And if you can’t do all three, you lose.
Monte: Right. And you also have to--you know, one would have to prove that you don’t have the right to own it, correct?
Howard: That’s correct, you have--the complainant must be able to prove that he has the right to the trademark and to the name and--
Monte: And you would not have the right to it, like there’s no--
Howard: And you do not have--
Monte: --legitimate right that you wouldn’t have.
Howard: That’s correct. I’ll give you a good example, one of my clients and I find that there are a couple of others in the same boat, have a domain called Shoesonline.com, and they got a seize and assist letter from Onlineshoes.com, saying that it was so similar to their trademark that he should cease and assist and give up the domain. Well, it is so obvious that that’s not the case, that, you know, you tell the client, look you don’t even have to hire an attorney, all you have to do is say look, they have to be able to prove that you’re dot-com is confusingly similar, that you did it in bad faith, that you’re using it in bad faith, and that you knew that you were trading on their name, and they can’t do that.
Monte: Right.
Howard: And once you’re able to respond, and like I say, you know, what you asked me, what’s a simple way to do it, you simply say, look, I’ve got a legitimate use for this domain, it’s not confusingly similar, let them prove that it is.
Monte: Right, right. And, you know, another big question that keeps coming up is, you know, let’s say that you have a trademark on a domain name, or let’s say you have a trademark on a name, but one has registered the domain name as a domain name prior to a trademark being filed, who has the actual rights to that domain name?
Howard: The domainer who registered the dot-com before the trademark, and that’s--
Monte: Now, is that true because of common law trademark that you can show that hey I intended to use it, do you have to have some sort of intent to use during that time?
Howard: You mean the complainant?
Monte: Yes.
Howard: The answer is yes and no, it all depends on the panel that you’re--that is considering it, but the bottom line is is that if the domainer can show that he registered the dot-com before there was any registered trademark, and didn’t know about the common law trademark, therefore there’s no way that you can prove that it was registered in bad faith. So the--again, the burden is on the complainant to show that it was registered and used in bad faith, and they can’t do that, if, in fact, the registration was prior to the trademark.
Monte: Right. And last week with Steven Lieberman, we spoke a lot about, you know, state versus federal versus community type trademarks and how they have effect across domain law, you know, not only here in the United States, but globally. What are some of the key things that one can do to protect those assets on a global basis? Steven mentioned, you know, having the domain name registered, you know, definitely taking the time to file a trademark if you’re having a legitimate business around it, and even going to a community trademark, which helps you in Europe.
Howard: Well, in so far as local courts, whether it’s in Germany or England or United States federal court, you don’t necessarily have to have a registered trademark.
Monte: Right, I know you don’t have to, he was just mentioning, hey, here’s some things you can do to help solidify your case in case there’s any issues.
Howard: Absolutely. Absolutely. If you can show use and--actually, the most important things when it comes to trademarks, even if they’re not registered, is fame, does anybody know that you have the trademark, is the trademark famous. Can you say that it has a life of its own, so to speak, so that whether it’s registered or not, anybody who uses that name as a dot-com would know right offhand that it had been used by the complainant as a trademark.
Monte: Right, right. And, you know, to file, what are some of the fees that are involved to help protect those assets, not only here in the United States, but globally, in case you need to do that?
Howard: Well, if the USPTO charges $350 to register a trademark, the other registries in different countries charges similar amounts in Eurodollars or pounds and so on, but I have found that most foreign trademarks carry a great deal rate in the foreign jurisdiction, and, you know, to some extent, in the United States jurisdiction, but I find that while English is the common language in most western countries, on the internet, United States law is also pretty much the master when it comes to filing any litigation concerning protecting those trademarks.
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