Domain Name Law - Technical

If you own a domain name, then it is possible (highly likely in some instances) that a similarly named entity may request that you hand over your domain name to them.

So how does it all proceed and why would I have to hand it over?

Essentially there is a three stage test and the odds are pretty much stacked against you, as follows:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

Well, thats pretty obvious, the entity would not come after you unless your domain had some similarity (in part or whole) to their "intellectual property/name"

(ii) you have no rights or legitimate interests in respect of the domain name; and

This is discussed below. If you just bought the domain on a speculative basis and do not trade with it, its not your name and you don't have a service/tradmark then you can assume you have no rights or legitimate interests in the name.

(iii) your domain name has been registered and is being used in bad faith.

This is also expanded on below. However, if you are aiming to sell to a competitor (Everyone in business is a competitor!)of the complainant (or have approached the complainant) then you have fallen foul. You would also fall foul if you had a "typo" of the complainants domain.

Demonstrating Your Rights to and Legitimate Interests in the Domain Name

Please note: That all these provisions are "or" which means effectively only 1 has to be agreed to prove a legitimate interest.

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

If you are not trading out of the domain name then this does not point to any bona fide use. Using your domain for PPC (Per per click revenue in a parking program is a weak form answer which is unlikely to hold).

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

Is it your name? Is it the same as your business? Do you have any trademarks or sevice marks?

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Unless you have no commercial aspirations or intent, then this offers no protection.

Evidence of Registration and Use in Bad Faith

Please note: That all these provisions are "or" which means effectively only 1 has to be agreed for it to be bad faith.

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

As mentioned earlier, essentially everyone in business is a competitor. If the name is similar to the name or trademark/service mark then its logical to assume that the intent was to the holder or its competitor. (If you have a generic name - dictionary word, then it plausible to state that a multitude of applications could exist that would not necessarily be a competitor to the complainant).

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

Large porfolio holders buying up trademark names that appear on the trademark register falls into this category. If you have bought the name of a trademark name then you are out on this by itself, however, there is supposed to be a pattern, which means than 1 infringement is ok.

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

The same name, or a similar name that could create or infer things on a competitor of yours. Probably does not apply to most domain name investors.

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

A domain name that is similar, or a typo of a company, under which you are trading as an affilate, would catch you out on this clause. This would include domains that pointed at another site.


Please always note that this is not professional advice, and should be interpreted as potential concepts for good faith domain holders to pursue in order to protect their rights in domain names.

Please refer to your legal advisor where necessary - This does not constitute professional advice Copyright UFO.ORG^TM(c) 2005