QUESTION

If I am actively billing clients for a service "X" but someone else is squatting on the domain name URL "X.com" would I have claim to it?

Asked on Mar 27th, 2012 on Intellectual Property - New Jersey
More details to this question:
I have a small S corp to run a business on the side of my regular 9-5. We are actively selling a service using specific terminology related to the service and the geographic location of our business. This service/geo name combination was registered as a domain name but is not in use. Do I have a claim to the rights for this domain name?
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1 ANSWER

There are 2 ways to get a domain name transferred to you - under the Lanham Act for "cybersquatting" or through an arbitration award under the Uniform Dispute Resolution Procedure (UDRP) which every domain name registrant agreed to when they registered their domain name. In both cases, you would have to show that the other person registered the domain name in "bad faith," which can be shown in a number of ways. One is that they registered the domain name AFTER you had trademark rights. If your trademark is federally registered, that is very helpful in showing that you have rights in the mark "X." You can review UDRP decisions at http://www.icann.org/en/help/dndr/udrp/proceedings to see what you would need to show to get the domain name transferred to you. Otherwise you can search for Lanham Act decisions under the Anti-Cyperpiracy Protection Act (ACPA), for example at http://scholar.google.com/advanced_scholar_search.
Answered on Mar 31st, 2012 at 12:46 PM

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