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.
Just because you own a trademark does not mean that the registrant of a domain name that incorporates that trademark is a bad faith cybersquatter. If that domain name registrant registered the domain before you acquired trademark rights or is making a legitimate and good faith use of the domain name, they may have rights superior to your trademark. To put it another way, they may not be a cybersquatter. In that case, you are not necessarily without options, but you may need to pursue something other than a cybersquatting demand letter or cybersquatter lawsuit or domain name arbitration.
Finally, let’s remember that with the explosion of gTLDs, there are multiple options for both trademark owners as well as cybersquatters. As such, you should not limit your attention to dot-com domain names, but in fact should be aware of existing registrations in the other gTLDs and monitoring for new gTLD opportunities for yourself and/or issues upon registration of such gTLD by a third party. Ultimately, a domain name attorney can help guide you through all of these issues, and may even be able to, upon analyzing your issue, answer your question in such a way that you are entitled to and can pursue a domain name that incorporates your trademark.