Trademark Holders Beware: First In Time, First In Right Still Has Weight When It Comes to Domain Name Registrations

Owning a trademark, be it common law rights or a trademark registration, does not necessarily entitle a business or individual to the corresponding domain name.  A domain name registration of another's trademark or incorporating that trademark into a domain name does not always mean a trademark holder can successfully sue a domain name registrant for cybersquatting.  Domain name registration is still on a first come, first served basis.  A domain name registration that is first in time confers rights upon that domain name registrant if you are not a cybersquatter whereby a trademark holder can establish rights that predate the domain name registration. 

Trademark holders must beware.  Just because you own a trademark does not mean you can wave a big trademark stick and successfully acquire the domain via the UDRP or an ACPA lawsuit.  While first in time, first in right can benefit you if your trademark rights predate the domain registration, it can be an absolute bar to recovery if the domain name registration predated your trademark rights.  Having a trademark registration with the USPTO does not give you the silver bullet to go after any domain name incorporating your trademark.  The UDRP may not be an option as expressed by numerous panel decisions:

Without establishing rights in a mark that predates a disputed domain name registration the outcome would allow junior trademark users to contest a prior domain name registration. Such an outcome is contrary to the Policy, which was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant’s rights must predate Respondent’s domain name registration, which numerous, previous decisions have held.  See Phoenix Mortgage Corp. v. Tom Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that the Complainant’s rights predate the Respondent’s registration . . . of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”).

Your trademark rights must predate the domain name registration.  An analysis of the relevant dates are critical, including when you acquired trademark rights (common law or through registration) and when the domain name registrant registered the domain.  An experienced cybersquatting attorney can advise you regarding your rights.  Even if it appears that the domain name existed prior to you establishing trademark rights, a cybersquatting attorney familiar with the UDRP can determine if you still have the ability to show predated rights.  Do not end up subjecting yourself to a claim of reverse domain hijacking for failing to consult with a cybersquatting attorney.  What you perceive to be a cybersquatter may in fact be the rightful owner of the domain and you may have to compensate the domain name registrant in order to get the domain name corresponding to your trademark.

Comments

[Enrico Schaefer]

Jill: First things first. Make sure your proposed mark isn't already taken by someone else. Second, identify all the necessary trademark elements necessary to get the trademark registered. It is typically better to hire a trademark lawyer to help with the process so that you get your trademark right the first time to register. Many trademarks achieve registration but are invalid because of a filing or other error.

[Jill Jackson]

How does one get started on filing a trademark application with the USPTO?

[Trademark Registration]

Registration is really mandatory for anyone seeking to invest in their brand. It offer so many advantages to trademark enforcement and protection. But many mark holders fail to understand that registration does not mean you automatically win. That is why a trademark available search is so important before selecting a company, product or service name. Then register your name. Then work hard to protect your trade or service mark in commerce.