Domain Name Clearance, Registration and Disputes

A presence on the World Wide Web is today an indispensable component for virtually every business. The first and most important building block of that presence is the domain name by which users will identify and get to your site. Securing and protecting an appropriate domain name, and preventing others from diverting your traffic with similar names, is therefore a critical mission.

Unfortunately, the world of domain names does not always correspond neatly to established trademark principles. The U.S. Patent and Trademark Office considers a domain name, - what you type in after the "www." - to be simply an address on the internet, like a street address, which is unprotectable as a trademark on its own. If the domain name is also used as a trademark, on the website or otherwise, to indicate the source of goods or services, however, it often can be registered as a trademark for those goods or services, assuming it otherwise meets the requirements of a registrable trademark.

We provide strategic counseling to help you and your company maximize the ability to register and protect rights in a domain name. We can assist your marketing personnel in understanding the differences between the reality on the internet and the rules at the Trademark Office, and in crafting a rational strategy for protecting your space in cyberspace.

We can also help you protect your brands against use in domain names registered by others. Pre-emptive registration may make sense for some key domain names, but it can never provide complete protection. Creative cybersquatters can always come up with another close variation that you haven't thought of. In such situations, the most efficient remedy is often arbitration under the registrar's Uniform Dispute Resolution Policy, a procedure with which we are intimately familiar.

But a UDRP proceeding is designed for dealing with pirates who have no good faith basis for using the domain they have registered. Many situations present more substantial issues. Another party's domain name may embody a mark that they use on very different goods and services, so that there is no likelihood of confusion with your mark except as used in the domain name, where that commercial context may not be apparent to the user. Or the domain may be used for a protest or criticism site for which the sponsor claims First Amendment protection. Or the owner of the domain may be an after-market reseller of your goods, claiming the right to use your mark in its domain name as a fair use.

For disputes involving such substantial issues, you may need remedies that only a court, not a UDRP panel, can provide. Even if you go to arbitration, the defendant may take the issue to court after losing. In such cases, our litigation experience becomes invaluable.

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