Your trademarks are among your company’s most valuable assets; controlling them is a necessity for successful branding. Domain names, particularly if they incorporate your trademarks, are part of your intellectual property portfolio and demand as much attention as your other assets.
Sometimes, through no fault of your own, another company owns a domain name, which flatly infringes your trademark. Such was the case with a client who recently retained Adam Garson of Lipton, Weinberger & Husick to reclaim a domain name from Marchex Sales, Inc. (Marchex), a public company in the business of acquiring huge portfolios of domains for Internet marketing. It owns such domains as videocamera.com, Debts.com, LasVegasVacations.com, CareerInfo.com and RentGuide.com. Marchex was running a website using our client’s trademark as its domain name. The web site contained various links to related goods and services including our client’s competitors.
Our client’s trademark, which cannot be disclosed here for confidentiality reasons, was only recently registered with United States Patent and Trademark Office. Nevertheless, it had been using the mark since the 1990’s and could prove continuous use until the present.
To rescue our client’s domain name, LWH filed an administrative action with the National Arbitration Forum (NAF) under the Uniform Domain-Name Dispute Resolution Policy (UDRP). The UDRP is a procedure sanctioned by the Internet Corporation for Assigned Names and Numbers and is available to anyone who has a domain name dispute. The UDRP may be used to obtain an order directing a domain’s registrar to transfer the domain to its rightful owner.
To succeed, the plaintiff — in this case our client — is required to prove the following:
(i) its domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) it has no rights or legitimate interests in respect of the domain name; and
(iii) its domain name has been registered and is being used in bad faith.
The process involves eight steps, from filing a complaint to final review. In our situation, it took 60 days after filing the complaint for the NAF to render an opinion. The panel found in favor of our client on all three counts. Marchex, the Respondent, argued that at the time it acquired the domain name, our client possessed no trademark rights because the trademark was generic and descriptive. The Panel rejected that argument. Here’s a sample from the panel’s 24-page opinion:
Complainant’s uncontested relevant evidence presented in support of Complainant’s having timely common law trademark rights in the at-issue mark are sufficient to demonstrate secondary meaning and overcome any presumption that the … mark is generic notwithstanding that each of the component words may be generic when taken discretely.
Respondent takes no steps to avoid holding or using trademarked domain names when it would be a simple matter to screen domain names prior to registration or acquisition to determine if they contain registered trademarks or marks in which there is likely a claim of rights such as the … mark. With even less trouble the Respondent might, after finding out that a trademarked domain name such as Complainant’s was registered as a domain name, cancel the trademarked domain name or voluntarily transfer registration, rather than link it do the mark holder’s competition.
It thus seems disingenuous for Respondent to claim it acquires domains because of the target domain name’s descriptive value. And even if Respondent’s motivation is as stated, the fact that Respondent cares not that it also is acquiring trademarked names is troubling and further calls into question the bona fide nature of Respondent’s endeavors….Registrants of large numbers of domain names or those acquiring domain names in bulk must be particularly careful in respect of the rights of third parties.
The case demonstrates that trademark owners who can establish common law trademark rights can prevail against large corporations even when the odds do not seem particularly favorable. Let us know if we can assist you with your efforts at reclaiming your trademarks and domain names.
— Adam G. Garson, Esq.
We have and continue to experience a similar situation with the name of e-debit.com with the same marketting group which we will be pursing as well. The e-debit.com was lost by us due to error by our hosting service about 8 years ago and have continually been trying to recover same with no success until we recently were advised that this Marchex Sales had the domain listed for sale. We are now reviewing our options.
Thank you for your posting.
Doug Mac Donald, President & CEO
E-Debit Global Corporation
trading symbol “WSHE”
Telephone – 403-290-0264
Doug — our client’s domain was also listed for purchase. Marchex ignored both offers, which is why we ended up before the NAF.