.com vs. ®

Who has superior rights as between a domain name holder and a trademark holder? This is an evolving area of law, which is ruled currently ruled by ICANN's domain name dispute policy, the Anti-Cybersquatting Act and the Lanham Act.

These new laws use a slightly different approach to reach the same conclusion, which is that a person who secures a domain name in bad faith will not prevail against a trademark holder. Imagine that you have the trademark "Sudsy"* for your soft drink and then another entity puts up a website for his computer store, Sudsy Computers and used the domain name www.sudsy.com. If that second entity registers www.sudsy.com for the sole purpose of selling it back to you as the rightful owner of the trademark, a court would likely find that this is bad faith. However, if Sudsy Computer registered the name for the purpose of selling their computers online, a court would probably find that this is an allowable use.

The above example is just one of the dozens of ways that the Internet is changing the rules of law as we know them. Jacobs & Associates takes pride in our attorneys extensive knowledge of the Internet generally and our understanding of the legal issues surrounding the online world.

*Any similarity to an actual company or website is entirely coincidental and unintentional.

By: Michael S. Gottlieb, Esq.