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Defending a Domain Dispute Based on Trademark Law

By Eric Misterovich

Domain name owners facing a domain dispute need to first understand the rules of the process and how trademark law plays a role in the case.

Domain Dispute Background

UDRP proceedings, or domain disputes, are administrative proceedings that ask an administrative body to transfer ownership of a domain. In other words, money damages are not at issue. Further, domain disputes are conducted on the pleadings only, meaning there will be no live testimony taken or witnesses called. However, parties are free to support their positions with sworn statements.

Trademark Rights and Domain Disputes

If possible, the domain dispute respondent must attack each element of the UDRP test to defend its case. The first element the complainant must prove is whether the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights?

One of the most common grounds to fight a domain name dispute is whether the complainant truly possesses trademark rights in a specific mark. If not, then the complainant cannot satisfy the first element of the test and will lose the domain dispute.

In this situation, the respondent needs to examine the complainant’s mark against substantive trademark law, including a determination of the following:

  • whether the mark is registered with the USPTO, and if so, the dates of use;
  • how common law rights were acquired, including evidence of secondary meaning in the marketplace;
  • whether the mark includes a geographic description, a personal name, or is simply descriptive or generic;
  • whether the mark contains an acronym;
  • whether the trademark rights have been assigned or transferred;

Attacking the complainant’s claimed trademark rights in the mark at issue can be a very effective strategy to defend against a domain name dispute. However, to make this type of argument, you need to possess a deep understanding of trademark law and how trademark rights are created. As a result, a trademark attorney with experience working in the UDRP process is best suited to defend domain dispute actions.

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