internet international trademark
Internet Domains and Trademarks
<p>I have owned a domain in the U.S. for last sixteen years. A foreign entity, who started operations in their country of origin (in Europe), filed a conflicting trademark in their own country in the 70's, but did not file a conflicting trademark in the U.S. until about five years after my domain registration. </p>

<p>When I registered the domain, I was unaware of the foreign entity. I have used the domain in question for my own business purposes, but it has no public web presence. Now the foreign entity, whose operations in the U.S. are growing, wants the name. The domain name is the exact name of the foreign business, and also the exact word listed in the U.S. trademark, and it cannot be considered a generic word.</p>

<p><strong>Does an international trademark filing carry any weight in a U.S. court? Does the fact that domain registration precedes the U.S. trademark registration by several years create any negotiation leverage?</strong></p>

<p>Trademarks, and upou quite possibly know, are specific to a particualr country. A trademark protected in France, say may well not be protected in the US and vice versa.</p>
<p>Domain registration is a different thing, and are not necessarily tied to a trademark (although registering a domain that infringes an existing trademark will often be disallowed).</p>
<p>The <a href="https://www.icann.org/resources/pages/policy-2012-02-25-en" rel="nofollow noreferrer">Uniform Domain Name Dispute Resolution Policy</a> (UDRP) is applied in disputes over the ownership of domain names. It states in section 2 that:</p>
<blockquote>
<p>By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.</p>
</blockquote>
<p>If you have registered a domain name, and another person or firm complains that the name is &quot;confusingly similar&quot; to an existing name or to a valid trademark, you might be required to participate in an arbitration proceeding under the UDRP, or else forfeit the registration.  Note that noting happens if no one complains.</p>
<p>Section 4(s) of the policy reads:</p>
<blockquote>
<p>You are required to submit to a mandatory administrative proceeding in the event that a third party (a &quot;complainant&quot;) asserts ...  that</p>
<ul>
<li>(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and</li>
<li>(ii) you have no rights or legitimate interests in respect of the domain name; and</li>
<li>(iii) your domain name has been registered and is being used in bad faith.</li>
</ul>
<p>In the administrative proceeding, the complainant must prove that each of these three elements are present.</p>
</blockquote>
<p>Note that</p>
<p>&quot;Bad faith&quot; can be shown by evidence that you obtained the domain for purposes of selling or renting it, not for use; that you intended ti prevent a valid trademark owner from obtaining the name, and have engaged in a pattern of such conduct; that your purpose was to disrupt the business of the other; that you intended to attract users who were looking for the other site.</p>
<p>Note also that the complainant bears the burden of proof of the elements of the complaint, including the bad faith in use of a domain. Evidence of actual use for legitimate purposes  will be relevant to this.  But note that a valid trademark from any jurisdiction will be considered in a n arbitration under the policy, not just US marks.</p>
<p>Note that an arbitration is not a court case, and court rules do not apply. But under section 4k of the policy:</p>
<blockquote>
<p>The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.</p>
</blockquote>
<p>So the case may become a court case.</p>
<p>In an actual trademark case, the first user of the mark in the relevant jurisdiction often has a key advantage. In domain name disputes, this is less true. However, having had the name registered before it began to be used by a complainant can be evidence of lack of bad faith, which can be very important.</p>
<p>The UDRP is generally included in all contracts to register a domain name, so you are almost surely a party to this agreement already.</p>
