Our company acquired a trademarked product. The name of the product has an existing domain. How do I go about this?

My Corporation recently acquired a trademark on a product we will be selling through the internet.  When I tried to register the trademarked product name as a .com domain name, I found that someone already registered it.  Doesn’t this trademarked product name belong to me legally?  How can I resolve this dispute?

Answers (1)

Millions of domain names have been registered, including thousands that infringe on trademarks.  The World Intellectual Property Organization (WIPO) is mandated to promote the protection of intellectual property worldwide. .  ICANN is the organization responsible for the management of top-level domains such as .com, .net and .org.  The Uniform Domain Name Dispute Resolution Policy (UDRP) went into effect on December 1, 1999 for all ICANN-accredited registrars of internet domain names.  Under the UDRP, WIPO is the leading ICANN-accredited domain name dispute resolution service provider.  The UDRP permits complainants to file a case with a resolution service provider, specifying:

  • The domain name in question
  • The respondent or holder of the domain name
  • The registrar with whom the domain name was registered
  • The grounds for the complaint

These grounds include the way in which the domain name is identical or similar to a trademark to which the complainant has rights, why the respondent should be considered as having no rights or legitimate interests in the domain name, and why the domain name should be considered as having been registered and used in bad faith.  WIPO will appoint a panelist to review the dispute and issue a decision.  A domain name is either cancelled, transferred, or sustained (the complaint is denied and the respondent keeps the domain name).  You may also want to seek advice from an attorney who specializes in the laws regarding intellectual property and domain name disputes.

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