A client of Winghart Law Group, Inc. (WLG) recently came to us with a problem of a squatter. Not someone hiding in their basement, someone squatting on the client’s trademark. Specifically, this squatter was a cybersquatter. The firm’s client had registered their business name with the USPTO and obtained a trademark for the business name. The client had obtained the domain name for the registered mark and all had been going well. Going well until the client forgot to renew their domain registration. Another company quickly registered the client’s domain and began selling items using the client’s trademarked name to drive traffic to this new site. This is a violation of the Lanham Act, specifically 15 U.S.C. 1125(d), which specifically is to protect trademark owners. What made matters worse for the client was the lack of an actual contract for the new domain name owner, and the registration was masked by a domain privacy company.
While an aggrieved owner can file suit under the Lanham Act, or initiate a proceeding under the Uniform Domain-Name Dispute-Resolution Policy, this client’s matter was resolved affordably and promptly. WLG was able to step in and present the necessary evidence to the domain company to force the new owners to return the domain to the rightful owners. The transfer process was initiated within a week, and the client recovered the control of their trademark and website.
Three-Point Turn Lesson:
- Be sure to effectively mark key important dates for your business on your calendar. This includes registration renewals for domains, trademarks, and other key intellectual property for your company.
- Keep an eye on your trademark(s). Set up a search alert for your trademark and see where online traffic is going.
- Don’t be afraid to contact an attorney to help you resolve these disputes before they get to the courtroom.
Winghart Law Group, Inc. may be able to help you cut off those problems before they outgrow your business. Contact us today to learn how we can help.
