QUESTION

I own a domain for a product that we sell and the domain has the name of the product in it. Can the owner of trademark take the website legally?

Asked on Feb 17th, 2012 on Intellectual Property - California
More details to this question:
I own a domain name such as "www.product_name-type_of_device.com" and the company that owns the trade mark to "product_name" wants to take the domain because it has their product name in it, which we buy from them and then resell. They are a manufacturer but also sell it. Can anyone point me to the right legal resource. They said something about title 17... Thank you for your help in advance. I am not sure if this should be in "Corporate Law, Business Law or Intellectual Property"
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1 ANSWER

There are 2 ways for someone to have your domain name transferred to them: the Uniform Dispute Resolution Procedure (UDRP) through ICANN or an action under the Anticybersqatting Consumer Protection Act ("ACPA") of 1999, 15 U.S.C. § 1125(d) of the Lanham Act, for cyperpiracy. In either case, they must show that you registered the domain name "in bad faith," which can be demonstrated in a number of different ways. For example, the following actions show bad faith: efforts to divert consumers from an authorized site; offers to sell the domain to third parties apart from an ongoing business; registration of multiple well-known domain names which are confusingly similar to famous marks; and use of false or misleading "contact" information in registering the domain name. Factors that show a lack of bad faith include your prior lawful use in offering goods or services, including "fair use" to identify genuine goods or for comparative advertising purposes. If you legitimately are selling their product that uses that trademark and they are profiting from the sale, then your registration of the domain name may not have been done in "bad faith."However, always keep in mind that regardless of whether you may ultimately win on that argument, that doesn't mean that a company might not still try to take the domain name from you.
Answered on Feb 25th, 2012 at 12:51 PM

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