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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2 ANSWERS

There is a second route to getting a domain name transferred to you, which is through a Uniform Dispute Resolution Proceeding (UDRP) that everyone agrees to when they register a domain name. You would submit your complaint to an arbitration panel, and the domain name owner would have a chance to respond. It is much less expensive and much quicker than a lawsuit. You still have to show that the owner of the domain name registered it in bad faith. If you win the UDRP, the domain name can be transferred to you. However, the loser has the option even then to take the matter to a court and stop the transfer.
Answered on Apr 07th, 2012 at 1:47 PM

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Patent Application Attorney serving New York, NY at Tarter Krinsky & Drogin LLP
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Under the Anti-Cybersquatting Piracy Act (ACPA), (Lanham Act S. 43(d), 15 U.S.C. S.1125(d)) a trademark owner has a cause of action against one who, with a bad faith intent to profit from the goodwill of another's trademark, registers, traffics in, or uses a domain name that is identical to, or confusingly similar to a distinctive mark.  Generally, to stop a cybersquatter, a trademark owner must show: 1. the domain name registrant had a bad-faith intent to profit from the trademark;2. the trademark was distinctive at the time the domain name was registered;3. the domain name is identical or confusingly similar to the trademark; and4. the trademark is a true trademark under the law (it qualifies for protection under federal trademark laws). Based on the fact pattern you have provided, it sounds as though your brand name is not a trademark since it is descriptive of your services and location, and has not acquired any distinctiveness. This is the first issue you need determined.  If you do have trademark rights in your brand name then you need to determine the issues above concerning the domain name registrant.    This information should not be considered legal advice for your specific circumstances and are offered only as general information on the topic of your question.  This should not be relied upon as legal advice and Sills Cummis and Gross does not represent you until you have signed a retainer letter from us. Philip Braginsky, Sills Cummis and Gross, http://www.sillscummis.com/practice/practice_group.asp?id=28
Answered on Mar 27th, 2012 at 3:49 PM

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