Can a domain infringe on a trademark

[riprod]

What is the name of your state (only U.S. law)? Florida

I was the distributor for an overseas company. Let's call it "ABC". The name ABC is trademarked and their product is patented. I sold it for 10 years. I also purchased 2 website domains and developed the websites at my own cost. www.abcfl.com and www.abcamerica.com
I terminated my agreement with them and offered to sell them the domains. They are claiming the domain names infringe on their IP Rights and they are demanding I hand them over.

Do I have any legal recourse ? And if not and they are in the right, how much does a lawsuit like this cost to do ? Would it really be financially viable for them to sue me ?

Thanks

 

[FlyingRon]

If you have no legitimate use to a domain with a trademark in it, you can be viewed as a cybersquatter and lose the domains if they want to go through the resolution process.

 

[riprod]

What does the resolution process involve?

 

[justalayman]

they file a challenge with ICANN or they can file suit in federal court


I disagree with the concern with cybersquatting though. You did have a valid purpose for the domains, specifically due to your association with the company. Cybersquatting is where one registers a domain they have no use for other than to sell it to some other party. That is obviously not the situation here.



In your situation, are they seeking the entire site or just the domain names?



I do not see an issue with selling them the domains. If you use them, especially since they have been associated with the company, I suspect there would be a valid challenge under trademark dilution (presuming you are not actually using it in direct competition, then you would have an actual infringement issue).

Your capacity with the company; employee or were you an independent contractor/company?

the way I see it;

if you do not actually use the name, you are not infringing on their marks. The only issue then is if they can force you to relinquish the domain and/website. I have doubts they would have such a right without an agreed upon sale.



A defense to a claim under the AntiCybersquatting Protection Act (federal law) is that if you had a reason to register the domain other than to sell it back to the trademark owner for a profit.

 

[FlyingRon]

You don not file challenges with ICANN.

You take your claim of cybersquatting and several thousand bucks to one of the the approved arbitrators and duke it out there.

Justa, your definition of cybersquatting is however at odds with ICANN. While the first three aspects of the rule cover your acquisition of the domain either to prevent the other business's use of the name or interfere with the other business, the rule also includes "using" (note rather than acquiring) the domain with the other's mark to attract people to a competing business.

 

[quincy]

The major problem I see with riprod's domain names is that he registered and used the domain names at one time to identify one specific ABC company, and he developed websites for this ABC company. In other words, the domain addresses directed consumer traffic to ABC company-related websites.

The continued use by riprod of these domain names could lead to consumer confusion, if he were to use them now for any purpose other than originally used.

If ABC company refuses to purchase the domain names from riprod, riprod risks having the domain name dispute end up in arbitration and his rights to the domain names terminated. An infringement action is probably unlikely unless riprod chooses to use the domain names again for his own (competing) company.

But, it is important to know all facts, and one major fact missing is the real name of the company. If the "ABC" company is, say, Google, this will play out differently than if the ABC company is, say, a small town plumbing company with the name "ABC Plumbing."

If riprod is interested in hanging on to the domain names for future use by him or if he is interested in hanging on to them until he receives what he feels is fair payment for the domain names, he should probably sit down with an IP attorney in his area to determine exactly what his continued rights to the names might be and to go over his potential legal risks.

 

[justalayman]

Justa, your definition of cybersquatting is however at odds with ICANN. While the first three aspects of the rule cover your acquisition of the domain either to prevent the other business's use of the name or interfere with the other business, the rule also includes "using" (note rather than acquiring) the domain with the other's mark to attract people to a competing business.

Op never claimed to be using the domains nor expressed intent to use them. Not using them means no infringemd. The only thing left is the cyber squatting issue and since the law defines squatting as acquiring the domains with no particular use by the person and with intent to profit from some entity that may otherwise have a valid claim for the name. Neither of these appear to be the case, or even a possibility gi even the situation.

So, I see no reason the op would not have a valid right to demand payment to relinquish the domains and if a deal cannot be made, to retain ownership, as long as he does not use them in some manner that would otherwise be unlawful.

 

[quincy]

What is the name of your state (only U.S. law)? Florida

... I was the distributor for an overseas company. ...

Where overseas is this company located, riprod?


As a note: If ABC Company does decide to take action against riprod to gain control of his domain names, and ABC uses the Uniform Dispute Resolution Procedure, there is a good chance the arbitrator will find in favor of ABC Company, as ABC Company is the trademark holder. That said, because the arbitrator's decision is not binding on either party, if one of the parties does not like the result of arbitration, a court action can follow.