Trademark Law

Domain Names: The Finder is Not Always the Keeper

By Brian Hall

So you are the owner of a domain name.  You use the domain name in conjunction with your business.  You have done so for years now.  Unfortunately, you inadvertently let your domain name lapse.  When you realize what you have done, it is too late.  Another registrant has registered what was once your domain name.  You no longer can offer your products and services at the website once housed at that domain name.  Even worse, the domain name is now being used by the new registrant to provide links to other websites.  What do you do?

This was the scenario in the recent UDRP Decision of World Wide Commerce Corporation v. WebContents, Inc., FA1124467.  The respondent who happened to have stumbled upon the domain name and registered it, noted in its response to the NAF Complaint, ?There is an element of ?Finders Keepers, Losers Weepers? in this decision.  We believe that is as it should be.?  Despite this argument, the panel held:

While ?finders, keepers-losers, weepers? is a quaint and classic saying it is also an oversimplification of the underlying law.  Actually the finder takes as to all the world except the true owner, or the prior peaceable possessor.  WWC Corp. provided sufficient evidence to show that it fit one of the preferred categories and Respondent, who rather unconvincingly claims to be an innocent finder here, is the party that must ?tear? itself away from the disputed domain name.

In doing so, the Complainant, and the former owner of the domain name worldwidecommerce.com, will now be the registrant and be able to use the domain name once again.  While other facts and arguments may result in a different decision, this decision makes clear that trademark rights trump finders? rights.

Lesson to be learned: just because you ?find? a domain name available for registration does not make it yours.  Consult with a domain name attorney prior to registering a domain name.  Also, if you have lost what was once your domain name, contact an attorney

Full post as published by Domain Name Dispute Blog on March 31, 2008 (boomark / email).