DOMAIN NAME RIGHTS IN UNREGISTERED TRADEMARKS

Ivan Hoffman, B.A., J.D.



        Here is the situation: you have not registered your trademark (Read “Should I Register My Trademarks?” And the answer to that rhetorical question is “Absolutely yes!”).  Now someone has come along and has registered a domain name (with or without an accompanying web site) using your mark or a mark you contend is confusingly similar to your mark.

        Do you have any legal remedies under the Uniform Domain Name Dispute Resolution Policy (“UDRP”)?

        The UDRP requires, as a foundational showing, that the Complainant have rights in the claimed trademark.  Under United States trademark law, rights in trademark are acquire by use and registration is not required.  (The laws of other nations may be different)  Without registration, such rights are referred to as common law trademark rights.

        However, the issues insofar as the UDRP is concerned is that the general rule is that first to register the domain prevails unless a Complainant has rights in a trademark as to which the domain is the same or confusingly similar and in that the use by the Respondent ought to be denied.  And when reviewing the relative rights of the parties, one, but certainly not all, of the factors is whether the Respondent knew of the rights of the Complainant in the trademark prior to registration and use of the domain.

        Registration of a trademark before the registration of the domain provides strong evidence (at least within the same country) that the Complainant has trademark rights and that the Respondent knew (or at least knew “constructively”) that Complainant had such rights.  (See also “Constructive Knowledge In UDRP Actions”)  This can go a long way toward proving up the Complainant’s case.

        However, where there has been no such trademark registration, the Complainant carries a much more difficult burden of proof, to the point that the failure to have registered the mark may result in a loss of the UDRP case.  In such instances, it is up to the Complainant to show that the claimed mark has achieved what is referred to as a “secondary meaning.”  (Read “Secondary Meaning In Trademark Disputes”)  This is a legal concept referring to the burden of proof resting on the shoulders of the party claiming to have such rights (in this example, a Complainant in a UDRP action) that consumers understand that the word being claimed as a mark is actually associated in the minds of the consumers as referring to the source of that mark, meaning the Complainant and its products or services.  Proof of such secondary meaning might be offered by evidence of how long the mark has been used, in what geographic areas the mark has been used, has it been used on the Internet, how much money the Complainant has spent in marketing the mark and the nature of the advertising and promotion of the mark, potential customer surveys and other factors.

        This burden may be difficult if not impossible to prove and, under any circumstances, much more expensive to prove that the cost of registering the mark in the first instance.  And it you can see that this can be not only an expensive process but one with a very uncertain result.  Had the mark been simply registered, the fact of registration creates the presumption of knowledge on the part of the Respondent.

        Moreover, when structuring the UDRP complaint, with a registered mark, all the Complainant has to allege is the fact of registration.   With an unregistered mark, the Complainant would have to plead (and ultimately prove up even if the Respondent defaults) the above claims.

        Further as well, once you have a registered mark, you avoid the possibility that a panelist on the UDRP panel is going to insert his or her own determination as to the validity of the mark, whether it is distinctive, descriptive or even generic.

Conclusion

        So the conclusion is…let me think…oh! yes: register your trademarks.  It can make the difference between winning and losing.

Copyright © 2011 Ivan Hoffman.  All Rights Reserved.

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This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship and is not a solicitation.

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