3. KNOW YOUR RIGHTS
=> Domain Name Registrations Generally
As a general rule, you can register any domain name that is not already registered (subject to trademark considerations discussed below). If your domain name is sufficiently distinctive, for example, jtdbizopps.com, bit before .com may also be a common law trademark (unless, of course, it’s registered and then it’s a registered trademark). If you DO have a distinctive domain name, then discussion in next section applies to you.
If you don’t have a distinctive domain name, however, and by this I mean a name that is “descriptive” or in general usage, for example, “home-business.com”, then this name will be neither a common law trademark nor a registrable trademark.
In this case, once you’ve lost your domain name registration, you are, not to put too fine a point on it, screwed. You don’t have much in way of recourse other than for “generic” legal avenues which may well be too expensive for you to pursue. These avenues are discussed below.
=> Domain Names and Trademarks
On other hand, if you have a distinctive domain name (i.e., one that is not in common usage), then that name is also likely to be a common law trademark (unless, as stated above, you’ve registered it, in which case it’s a registered trademark. And, if you do have a common law trademark, I would recommend that you register it. Registration can only strengthen your position.)
The law generally sides with pre-existing trademark owner over domain name holder. In addition, U.S. has enacted federal Anti-Cybersquatting Consumer Protection Act (the “Act”). Under Act, you can sue a cybersquatter to get back your domain name and sometimes damages to boot. So, what’s actionable under Act? Here’s an extract from Act itself:
“A person shall be liable in a civil action by owner of a mark, including a personal name which is protected as a mark ... if, without regard to goods or services of parties, that person
(i) has a bad faith intent to profit from that mark ...; and (ii) registers, traffics in, or uses a domain name that
(I) in case of a mark that is distinctive at time of registration of domain name, is identical or confusingly similar to that mark; (II) in case of a famous mark that is famous at time of registration of domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a [registered] trademark ...”
In terms of what constitutes “bad faith”, Act provides that court may consider factors (among others) such as:
“The person’s [i.e., alleged cybersquatter’s] intent to divert customers from mark owner’s online location to a site accessible under domain name that could harm goodwill represented by mark, either for commercial gain or with intent to disparage mark, by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of site; and
“the person’s offer to transfer, sell, or otherwise assign domain name to mark owner or any third party for financial gain without having used, or having an intent to use, domain name in bona fide offering of any goods or services, or person’s prior conduct indicating a pattern of such conduct.”