Domain Name Disputes

There are literally thousands of cases pending before World Intellectual Property Organization (WIPO) arbitration panels regarding conflicts between two or more users of domain names and/or between holders of Federal (or state) trademarks and users of domain names. In a recent case American Information Corporation vs. American Infometrics (FA0105000097339), Donna Maria Coles Johnson of Jacobs & Associates successfully argued that its client's prior use of a domain name in commerce (even though it had NOT registered it as a trademark) was sufficient to deny a Federal Trademark holder's claim to have the domain name transferred to it under the rules of the Internet Corporation on Assigned Names and Numbers (ICANN's) Uniform Domain Name Dispute Policies. 

While obtaining a federal trademark over your goods and or services is typically the best course of action, as this case demonstrates, it is not a certainty that a federal trademark will be sufficient to oust a a prior user who can prove prior use of a mark under the traditional rules of common law trademark priority.

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 our understanding of the legal issues surrounding the online world and the cost-effective results we have obtained for our clients. Please feel free to contact us if you have a similar issue facing your organization.