Legal Question in Intellectual Property in California

Re: Existing unused URL, now I have the trademark

I can't comment on your particular circumstances, but you may have a few options available. Among them is federal litigation under the Lanham Act or the Anticybersquatting Consumer Protection Act, or arbitration under the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Policy (UDRP). ICANN oversees domain names worldwide. An ICANN arbitration is quick, simple, and cost-effective; the entire process can take less than three months. Although you can't recover damages, ICANN arbitration does not preclude litigation later on, and the filing fee�between $1,300 and $4,000 for a disputed domain�is much smaller than the investment required for a federal case.

These five stages in an ICANN-UDRP arbitration apply: (1) a complaint is filed with an accredited ICANN-UDRP dispute resolution service provider; (2) the respondent files a response; (3) an administrative panel is appointed; (4) the panel issues a decision; and (5) if a domain name must be cancelled or transferred, the decision is implemented by a registrar (a company accredited by ICANN to sell domain names).

You will need to support your claim with evidence of: (1) the respondent's domain name is identical or confusingly similar to your client's trademark or service mark; (2) the respondent has no rights or legitimate interests in the domain name at issue; and (3) the domain name has been registered by the respondent and is being used in bad faith.

Your evidence must be attached to the complaint. Generally, there is no reply brief or oral argument, so the evidence you provide is crucial.

Evidence commonly submitted to ICANN panels includes advertisements, catalogues, invoices, newspaper and magazine articles, miscellaneous evidence of business reputation or goodwill, and documentation of your client's online presence.

This is the route taken by many parties in domain-name disputes. In 2008, WIPO alone administered more than 2,300 arbitration claims. Of those cases, approximately 1,100 resulted in a transfer of the domain name, and in only about 175 was relief denied.

I hope this was helpful.