Question: Do I have trademark rights in my domain name?

Answer: You may actually have trademark rights superior to those of your accuser. You may have such trademark rights because
(a) you have a registered trademark;
(b) you have a pending "intent to use" trademark application, of which the filing date predates the use of the mark by your accuser;
(c) you have a pending "use based" trademark application and your date of first use predates the first use of the mark by your accuser; or
(d) you have ?common law? rights to the trademark.

In the U.S., the person who establishes priority in a mark gains the ultimate right to use it. According to the Lanham Act, determining who owns a mark involves establishing who first used it to identify his/her goods. That means, in the United States, you do not need to register a mark to establish rights to it. However, registering a mark means that the registrant is presumed to be the owner of the mark for the goods and services specified in the application.

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Question: How do I prove that I have trademark rights in my domain name?

Answer: Under (a), (b), and (c) above, if you have registered the trademark or have filed an application for the trademark that predates your accuser's use, your priority will be easy to prove.

Under (d), above, to prove that you have "common law" rights in the trademark, you will need to prove when you first started to use the trademark. The following evidence can help you establish this:

1. Advertising predating your accuser's use of the mark.
i. Copies of advertisements showing your use of the
ii. Public relation materials showing your use of the
iii.Search on Internet for review of articles mentioning your use of the mark for your product or services
iv. Advertising bills specifically mentioning ads for the product or services.

2. Any receipts or other documents showing sales of the product

3. Any articles that contain a review of your product or services.

4. Any listing in trade brochures indicating use of the mark at a trade show.

5.Any other documents which show when you started making the product or offering the services.

All of these will need to be dated, or you will need some way of proving that they pre-date your accusers use of the mark.

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Question: What information is available to someone researching domain name ownership?

Answer: A "Whois" record. A "Whois" record is the information provided to a registrar when someone registers a domain name. This record generally includes the name and contact information of the "owner" of the domain name, as well as the technical contact and the billing contact. Often, these contacts are the same person. (The IP address for the web site is also included in a Whois record. This provides the address of where the site is hosted.)

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Question: How do I find a "WHOIS" record?

Answer: On the web, you can start with the InterNIC registrar lookup, http://www.internic.net/whois.html and follow that to the registrar's website, or try combined lookups at SamSpade, GeekTools, or uWhois. Command line tools are available that use the port 43 WHOIS protocol.

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Question: What does a "Whois" record say about domain name ownership?

Answer: The Whois record lists the name of the person or entity who is listed as the owner of record of the domain name. The information supplied, however, may not be strictly accurate.

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Question: What does a "Whois" record omit to say about domain name ownership?

Answer: A Whois record does no include any information with regard to chain of title. It merely lists the current owner of record. This means that you cannot determine who the original owner of a domain name was if the domain name had been transferred.

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Question: How reliable is a "Whois" record?

Answer: The information in a Whois record is only as reliable as the person providing the information. While the information is supposed to be accurate and updated, this is often not the case. However, even the inaccurate Whois information may, in certain circumstances, be grounds for suspension of a given domain name.

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Question: What is the most common mistake a Respondent makes in answering a Complaint in a UDRP proceeding?

Answer: A naked denial, without providing any facts or evidence to support the denial. For example, "I am not cybersquatting", or "I havenot acted in bad faith."

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Question: How do lawyers "buy time" when a cease and desist letter is received by a client?

Answer: What a lawyer will often do to maintain the status quo is to send a response to the demand letter, within the stated time, saying something like this: We are in receipt of your letter of (date) "Please be advised that we are investigating the matter and will be in contact with you shortly." This letter ordinarily gives additional time to research the allegations, and should give you some additional time to contact a lawyer if you need to.

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Question: Should I accept a single panelist in UDRP proceeding?

Answer: There is a great risk for a Respondent in accepting a single panelist. Statistics show that in an overwhelming majority of cases, where a single panelist is appointed by the organization chosent to arbitrate the matter, the Respondent has lost.

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Question: If a UDRP Complaint is filed against me, what are some of the facts I should attempt to demonstrate in my Response?

Answer: A. That you are not a competitor.
B. That you have not tried to sell the domain name to Complainant, or anyone else.
C. That you have a legitimate business (or any other) purpose for using the mark.
D. That you are not making trademark use of the word or phrase in which Complainant has trademark rights i.e. that you are using the word in its ordinary, every day, meaning and not as an indicator of source.
E. That Complainant's rights do not extend to your use of the trademarked word or phrase.

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Question: How should I go about selecting a panelist for a UDRP proceeding?

Answer: Check the track record of panelists to see how they have ruled in the past. You want to make sure that some of the rulings have been in favor of Respondents. Also, make sure that the panelist is familiar with trademark law. You can check the past rulings of the panelist at http://www.icann.org/udrp/udrpdec.htm

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Question: How can I show that Complainant's trademark rights in a mark do not extend to my use of the mark in my domain name?

Answer: One way is by showing the mark is a common name or common word. Using "Basset" as an example:
A. Conduct a white pages search on the Internet, or local phone books, to demonstrate the word is a common last name.
B. Using a search engine, such as "Google", show that the word has been used many times in many contexts not related to Complainant's field of use.
C. (Attach this evidence to your Answer)
D. (Link to UDRP decision concerning Basset)

Of course that will only help you if you are using the term in a way that does not make people believe your site is run by the Complainant trademark holder, and outside the class of goods or services for which the trademark applies.

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Maintained by USF Law School - IIP Justice Project