Kramer Telecom Law Firm, P.C.

There are lots of very valuable Internet domain names out there. I own over 100 valuable domains, myself. You may own one or two yourself.

If your domain name happens to sound like a registered trademark (or even an 'unregistered/common law' trademark), you might find yourself receiving a demand letter from an attorney telling you that you must turn over your valuable domain name to the attorney's client.

Do you have to? Like all legal questions, it depends on the specific facts of the matter, so here are some general comments to give you basic guidance:



Trademark registration varies from state-to-state within the U.S., and country to country, and by common law rights that may be acquired by usage.

In the U.S., trademarks can be registered at the state level offering per-state protection for marks not infringing on prior federally-issued trademarks. Federal registration of a trademark is, therefore, superior to state trademark registration especially when the trademark is federally registered BEFORE an inferior state-only registration. Federally-registered trademarks are valid in all states, so they may be superior to state-only registrations.

By the way, trademarks and service marks are different, yet nearly the same. For the most part, a trademark is a protected name placed on a physically tangible product (i.e., the word, "Ford" physically placed on autos and trucks), while a service mark is for protecting a name as used in connection with a non-tangible service (i.e., "The Rivky Paint Method" which is for "Providing courses of instruction and training in the field of art"...you can't place a name label on 'courses of instruction').

Sometimes a mark can be both a trademark and a service mark ("The Linden Method" ... you can look it up). Both trademarks and service marks offer the protection required under the UDRP to meet the rights requirement.

If a mark is federally registered (in the U.S. on what's called the Principal register), then for UDRP purposes in the U.S. the name is protected and that prong of the UDRP analysis is complete IF the domain name AND the domain owner's usage are the same (or close enough) in the same category as the protected mark.

For example, someone who registers "BuyYourF-450TruckFromMe.com" and that person is NOT authorized by a certain popular truck company, then you have a prima facie (on its face) infringement on Ford's trademark (No. 3620901). You Kiss off the domain when Ford's lawyers come a'knock'n.

Contrast what I've just said with "GetYourVisaThroughMe.com." If you registered that domain name and the "Visa" you're talking about is a government issued document that you'll help someone secure, and that's only what your web site promotes (and not getting credit cards, for example), then the nice lawyers at Visa, the credit card company aren't likely to be successful getting the domain name away from the you.

There are a whole class of domains that incorporate, or sound/spell like, or disparage legal trademark names. Some examples include:

• Jeremy Cooperstock's "untied.com" (a "whistle blower" site opposing a certain large airlines);
  
  
• "disney-sucks.com" (a site registered to a certain Mr./Ms. "Atom Smasher" with a listed address in Wellington New Zealand); and
  
  
• "fucknetscape.com" (but also see "fuckphilips.com" for a different result).

We help domain name owners understand their rights and duties, and help ward off baseless attempts to secure a valuable domain name by claiming a remote infringement.

May we help you protect your valuable e-property (domain name) from such an attack.

There is no charge for an initial consultation with Mr. Kramer (up to 30 minutes...who knows ...maybe more if your matter is interesting or fun).

You can reach our firm on (310) 312-9900, or toll-free on 1-866-KramerLaw (1-866-572-6375).  Mr. Kramer's direct extension is 121.

If you'd like to send an electronic message to Mr. Kramer, please CLICK HERE.