Many people think that by simply registering domain names they have ownership rights to those domains, and can fend off anyone else asserting rights. However, what people often do not understand is that even if they are able to register domain names that incorporate the trademarks of another company or person, they will face demands for transfer of the domain names, and if they do not capitulate, they probably will be on the receiving end of legal action.
And importantly, the trend in the law is to award transfer of domain names to trademark holders away from domain name registrants who do not have trademark rights to domain names.
Indeed, trademark holders in the past have been successful either by way of court results or negotiation to obtain the transfer to them of the following domain names: www.aol.com, www.candyland.com, www.etoy.com, www.kaplan.com, www.mtv.com, www.plannedparenthood.com, www.porsche.com, www.toysareus.com, and www.painewebber.com.
For a very recent example, fresh on the heels of its legal victory in obtaining the transfer of the domain name www.fcuklifestyle.com, French Connection Limited has just scored another legal win, securing the transfer of www.frenchconnectiononline.com. By way of these results, like other strong trademark holders, French Connection has served notice that it fully intends to enforce and protect its trademarks, FCUK and FRENCH CONNECTION, in cyberspace.
French Connection is involved in the design and retail of clothing and grooming products and is the holder of numerous international trademarks for FCUK and FRENCH CONNECTION, including registrations in every continent worldwide. After establishing its right to protect its FCUK mark in gaining the transfer of www.fcuklifestyle.com, by proving that that domain name improperly incorporated the FCUK mark, the corresponding Web site was designed intentionally to attract Internet users for commercial gain by creating a likelihood of confusion as to the sponsorship of the site, and that the www.fcuklifestyle.com domain name was registered in bad faith, French Connection set about proving its enforcement power with respect to the improper use of its mark FRENCH CONNECTION in offending domain names. Specifically, French Connection initiated an arbitration proceeding before the World Intellectual Property Organization Arbitration and Mediation Center (WIPO) to obtain the transfer of the domain name www.frenchconnectiononline.com.
French Connection was represented by the US-based law firm, Duane Morris LLP (including your author), and the UK-based law firm, Davenport Lyons.
Just like in the first dispute, the three-member WIPO panel ruled unanimously in favor of French Connection in awarding the transfer of www.frenchconnectiononline.com. The panel first concluded that French Connection has valid registered rights in the FRENCH CONNECTION mark. The panel next found that the registrant of the domain name, Frederique Taillefer, of San Diego, had no rights or legitimate interests with respect to the domain name and that French Connection had not provided authorization to the registrant to use French Connection's mark within the domain name.
Finally, the panel held that the registrant had registered the domain name in bad faith, among other reasons, by creating a likelihood of confusion as to the sponsorship of the corresponding www.frenchconnectiononline.com Web site. Accordingly, the domain name was ordered transferred to French Connection.
Would-be registrants would be smart NOT to seek to incorporate trademarks within contemplated domain names. Trademark holders have established the validity of their trademarks in cyberspace, and by their actions has proven that it fully intends to protect and enforce their rights.
Eric Sinrod is a partner in the San Francisco office of Duane Morris (www.duanemorris.com), where he focuses on litigation matters of various types, including information technology disputes. His column appears Wednesdays at USATODAY.com. His Web site is www.sinrodlaw.com, and he can be reached at . To receive a weekly e-mail link to Mr. Sinrod's columns, please send an e-mail with the word Subscribe in the Subject line to .
Reprinted here with permission from USAToday.com.