Question: Is there any legal restriction, if a person registers a domain name unknowing which already belongs to a company (i mean trademark)?

Nominee Replies

Sureswaran Ramadass - posted on 2000-09-30 04:57:47 Currently, there are no legal restrictions. Johannes Chiang - posted on 2000-09-27 01:39:54 The basic rule is provided by the paragraph 4 of UDRP. Once a complaint is filed, the Complainant, i.e the trademark owner, must prove that all terms in Paragraph 4 of the UDRP (Uniform Domain Name Dispute Resolution Policy) are true. Remember, it is the Complainant's responsibility to prove that the Respondent violates all those terms in Paragraph 4 of UDRP. On the other hand, as long as the Respondent can prove that any one of the conditions in Paragraph 4 is not true, there is very good chance to win this case. To the contrary, the decision may be for the trademark holder (Complainant) and you may lose your domain name if you ignore the complaint and do nothing after you receive a notification from the Mediation Provider telling you that a complaint against you was filed by a Complainant. The 3 elements in Paragraph 4 of UDRP are listed below for your reference: (i) your domain name is identical or confusing similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. Masanobu Katoh - posted on 2000-09-21 14:39:10 The answer depends on each case. If the person registered the domain name under a global top level domain name (gTLD) such as .com or .net, the dispute over the name would be governed by the uniform domain name dispute resolution policy (UDRP) of ICANN. Under the UDRP, the trademark holder can initiate a very quick arbitration proceeding. The basic standard the arbitrator would apply is whether the domain name was registered and used in bad faith. The UDRP includes factors the arbitrator should consider in determining whether the registration and use is in bad faith, such as whether the person registered the name in order to sell it to the trademark holder or benefit from the confusion between the names. If the person had no knowledge of the trademark, it should be difficult to show that the registration was in bad faith. However, if the person demands large sums of money from the company once it learns of the trademark, that might suggest bad faith use of the name. Further, in the U.S., there is a cybersquatting law, which also employs the bad faith standard. The answer may be different if the person is registering a name under some country ccTLD system, where there may be some different legal requirement. The domain name system and its relationship to existing law need further study as many legal ambiguities remain. This is one of the major reasons why I think international groups, such as ICANN, have an important role to play. Lulin Gao - posted on 2000-09-20 00:35:11 If a domain name that a registrant wish to register already belongs to another party as trademark, the proposed domain name will be in conflict with the trademark. Despite the registrant's actual knowledge of the existence of that trademark, from a legal point of view, his/her registration of the domain name constitutes an infringement of such trademark. In order to avoid that conflict, my recommendation is that the registrant should make appropriate trademark search before registration of the proposed domain name. Please note that this has been an advisable practice since, under ICANN approved dispute policy, the registrant is required to make relevant representation and warranty that the registration does not infringe upon the intellectual property rights of third parties.