Legal Question in Technology Law in California
Domain Name Ownership
I am a domain reseller and in 2001, a customer registered several domain names fraudulently. Because of this fraudulent transaction, I ended up with all these domain names, so to try and recoup my losses, I tried reselling them. One domain name, lets say.... name . org (not the real name), I still own.
Three months (referenced by registrar) after the .org name was registered another company registered name . com.
This company contacted me around 2002 and 2003 offering to buy my .org domain, which we couldn't come to terms on what I felt was a fair offer.
In 2006, I was contacted by email, by an attorney for this company demanding me to Immediately disable the webpage and Immediately transfer the infringing domain, because they trademarked the name in 2003., which they attached a copy of. I ignored the message, and have never heard from them again.... to date
Their site is an adult-oriented site. I also had adult-oriented affiliate links on the name.org site, but removed them. Today, I have 2 adult-oriented banners on the name.org site. It gets some traffic, but have never had sales from this site.
Who actually has rights to this name?
And what can be done about this?
2 Answers from Attorneys
Re: Domain Name Ownership
This is a highly specialized area of the law. I've been general counsel for large domain registrars and hosting companies and parking companies and, unless you originally registered the domain for many years, your situation sounds precarious. There are specific steps you can take to better defend your domain but you may lose it if you are not well informed.
Re: Domain Name Ownership
A claim to a domain name based on nothing more than ownership of the same or similar words as a trademark is inherently weak. There is a lot of case law interpreting the federal laws against cybersquatting and cyberpiracy, and the conclusion I reach is that if the alleged infringer does not have a bad motive and the trademark itself is not famous, there is relatively little risk of a successful suit by the trademark owner. Where a domain owner gets in trouble is (1) if the name is registered and held for the primary purpose of resale at a profit, not use; (2) where business is being diverted due to customer confusion about whose site they are doing business with; and (3) where the site name resembles a truly famous trademark, like Coca-Cola.
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