service mark & domain names

[awrd]

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

If i own the service mark "joes fast plumbing", (exactly as i have it written here) and i have a live website "joesfastplumbing.com" - is someone infringing upon my service mark if they buy the domain name joesfastplumbing.net (or any of the available extensions that exist such as .us, .info) *** & have it in use/ live on the internet?

***And they are NOT using my service mark on any of their website pages - only as the domain name in the url bar.

So you go to joesfastplumbing.net and there is no 'joes fast plumbing' anywhere on the site, just in the url, and they have a plumbing website at this address.

thx

 

[quincy]

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

If i own the service mark "joes fast plumbing", (exactly as i have it written here) and i have a live website "joesfastplumbing.com" - is someone infringing upon my service mark if they buy the domain name joesfastplumbing.net (or any of the available extensions that exist such as .us, .info) *** & have it in use/ live on the internet?

***And they are NOT using my service mark on any of their website pages - only as the domain name in the url bar.

So you go to joesfastplumbing.net and there is no 'joes fast plumbing' anywhere on the site, just in the url, and they have a plumbing website at this address.

thx

It is possible that the owner of the .net domain name has infringed on your service mark, yes. The .net owner could potentially be stopped from using the "joesfastplumbing" name as a way to direct consumers to his site.

If you have used your Joe's Fast Plumbing name as your service business identifier longer than the other domain name owner has used the same name to direct consumers to his site, and consumers have been or are likely to be confused, by being directed to his site when expecting to be directed to yours, you could challenge the domain name use through the Uniform Dispute Resolution Procedure (UDRP) and possibly wrest from the other owner the .net domain or stop his use of it. UDRP can be a fast and relatively easy way to resolve domain rights disputes (although, because UDRP is nonbinding arbitration, you could still find a court action necessary).

You can use the following Internet Corporation for Assigned Names and Numbers (ICANN) link for UDRP rules: http://www.icann.org/udrp/udrp.htm

Or, if your name is recognized by consumers as connecting with your business, and confusion has arisen over the .net versus .com domains, you could also potentially sue for infringement under trademark laws.

You may wish to see an attorney in your area for a review of the facts and the websites in question. Good luck.

 

[FlyingRon]

The problem is that a service mark in most cases has geographical and marketspace limitations, domains do not. It's quite possible that if you are in Cleveland and some other Joe in Las Vegas could have the same service mark legitimately but the website names by necessity overlap. For UDRP you'd have to show that the other site was created in bad faith to invoke the anti-cybersquatting provisions. Note that the UDRP price of admission is on the order of $3000. While it they call it "arbitration" it really doesn't fit the definition of either binding or non-binding arbitration under US law. Yes, it can be taken further in the courts (by either party) but the results of the arbitration finding (if held for the plaintiff) will be executed immediately (i.e., the defendant will lose the domain).

 

[quincy]

The problem is that a service mark in most cases has geographical and marketspace limitations, domains do not. It's quite possible that if you are in Cleveland and some other Joe in Las Vegas could have the same service mark legitimately but the website names by necessity overlap. For UDRP you'd have to show that the other site was created in bad faith to invoke the anti-cybersquatting provisions. Note that the UDRP price of admission is on the order of $3000. While it they call it "arbitration" it really doesn't fit the definition of either binding or non-binding arbitration under US law. Yes, it can be taken further in the courts (by either party) but the results of the arbitration finding (if held for the plaintiff) will be executed immediately (i.e., the defendant will lose the domain).

A lot will depend on if the service mark has been federally registered. Perhaps awrd will return to let us know?

 

[TheGeekess]

A lot will depend on if the service mark has been federally registered. Perhaps awrd will return to let us know?

He's too busy posting down the street.

 

[quincy]

He's too busy posting down the street.

Ahh. I see.

Well, awrd will get better answers to his questions on FreeAdvice - unless, of course, FlyingRon and I decide to head over to EL (then the answers to his questions will pretty much look the same).

 

[FlyingRon]

A lot will depend on if the service mark has been federally registered. Perhaps awrd will return to let us know?

If he's being sued in federal court, yes.

As far as UDRP is concerned, it doesn't matter if he has a good faith use for it, even if it's infringing. UDRP is distinct from IP law,

 

[quincy]

UDRP is distinct from trademark law. Right.

But, when registering a domain name with ICANN, and when seeking a dispute resolution through UDRP, one needs to keep in mind IP rights. A registrant who uses the trademark of another in the domain name is at risk of being sued (infringement/dilution/unfair business practices), and, in a Uniform Dispute Resolution proceeding over rights to the domain name, the advantage goes to the holder of the trademark (more often than not).

Having a trademark registered with both the state and federally will provide a trademark holder with the most options should a dispute over the name (or a domain name) arise. There can be both state and federal claims to consider. Some trademarks/service marks are not eligible for federal registration, however, and some states do not register service marks (I haven't checked New York).