Any domain name law attorney is regularly faced with the question from prospective and existing clients alike: “How can I get the domain name that matches my trademark?” Some assume that they are automatically entitled to it, while others recognize that domain name law requires several things before one can alleged or pursue a cybersquatting matter. Since domain names rights are on a first come, first serve basis, only in the event that the trademark owner can establish trademark rights and a bad faith intent to register, use or traffic in the domain name that they wish to own would a cybersquatting cause of action apply. Therefore, an experienced domain name attorney will be able to answer the question only after analyzing both your trademark rights and the domain name registration and use in order to determine whether or not the requisite bad faith intent exists.
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The National Arbitration Forum recently issued a decision on June 24th, 2013 that involved what we have seen to be a fairly regular factual dispute. In particular, the complainant had retained a web developer to create its website. When the complainant failed to pay the web developer, the web developer changed the website available at the domain name. In particular, the web developer made the webpage resolve to content that stated that the website was paused for non-payment of an overdue invoice, and that invoice amount was for $1500. Interestingly, the complainant had transferred the domain name to the web developer as part of the project. As is not uncommon, the complainant simply did not know that it should not retain registration of the domain name for reasons like this. The UDRP (Uniform Domain-Name Dispute-Resolution Policy) panelist determined that the respondent's request for the domain name and use to display that there was an overdue payment, amounted to a bad faith registration and bad faith use, as is required under the UDRP. Therefore, the UDRP panelists decided in favor of the complainant and ordered transfer of the domain name, namely AlaskaHealthFair.org.
This decision may come as a surprise to some, in light of the fact that it is a fact pattern that is not necessarily limited to traditional cybersquatting. Instead, it involves contractual issues, namely the breach of contract to pay a web developer. However, this UDRP decision may be used as precedent in the future to resolve domain name disputes that involve factual scenarios similar to this. Nevertheless, a domain name attorney will be in the best position to analyze particular facts and determine whether or not the UDRP is the best course of action.
Traverse Legal domain name dispute and website attorneys helped the website owner/registrant of the disputed domain name, va.co.za, to win a domain name dispute on appeal in a South African court. After initially suffering an adverse decision by the Adjudicator, the website owner prevailed on appeal and was able to retain possession of the disputed website. The Appeal Panel found that although a two letter generic domain name is possibly trademarkable, the complainant (owner of the device mark containing “V&A”) in this case failed to provide sufficient evidence to prevail on its trademark infringement and common law claims.
The V&A Waterfront filed the complaint with the South African Institute of Intellectual Property Law (“SAIIPL”). At the lower court level, a SAIIPL court Adjudicator rendered his decision in favor of V&A Waterfront on April 12, 2012. However, registrant/owner of the va.co.za website, Mr. Brandon Davids, appealed the SAIIPL Adjudicator's decision. Following Davids' appeal, on June 22, 2012 an Appeal Panel for the SAIIPL appellate court reversed the Adjudicator's decision and this time ruled in favor of Davids.
The complainant, V&A Waterfront, is the owner of the South African destination hotspot known as V&A Waterfront property, located in Cape Town, Western Cape, South Africa. Along with being voted South Africa's number one tourist destination, V&A Waterfront boasts more than 20 million annual visitors and during the 2010 Soccer World cup alone it hosted more than 3 million visitors.