Tune into trade marks

Madonna, Sting, Paul McCartney, The Estate of Jim Morrison, Dire Straits, David Gilmour of Pink Floyd and Jennifer Lopez have all been caught up in domain name disputes. There are many lessons that aspiring musicians can learn from these cases. Perhaps the most important is the value of a trade mark registration. While a trade mark registration is not essential to succeed in a domain name dispute, it certainly helps. The absence of a trade mark registration causes many costly problems. Bands and musicians should secure their domain name and corresponding trade mark registration as soon as possible. But often that does not occur.

ICANN domain name dispute policy

The most important generic top-level domain (gTLD) is still the “.com” domain name. Where a dispute about the domain name occurs these are frequently decided by mediation centres such as those offered by the World Intellectual Property Organization (WIPO) based in Switzerland (seehttp://www.wipo.int/amc/en/domains/gtld/) and the National Arbitration Forum in the US (see http://domains.adrforum.com/). The two remedies available are limited, namely transfer or cancellation of the domain name, but compared to court proceedings the costs are reasonable.

Such disputes are decided under the ICANN (the Internet Corporation for Ascribed Names and Numbers) policy. This focuses on three elements for settling all gTLD domain name disputes concerning com, info, net and org:

(1)      the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2)      the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)      the domain name has been registered and is being used in bad faith.

While bands and musicians can rely on unregistered trade marks or common law passing off rights in proving these elements, it is also certainly true that a trade mark registration will assist greatly in proving the above three elements. The first element does not specifically mention “registered trade marks”, but it does mention “identical or confusingly similar to a trademark or service mark.”  And without question the best and time-honoured way of showing that you have rights in a trade mark is to own a trade mark registration. That’s why the top companies in the world (such as Microsoft and Coca-Cola) and the most famous artists and bands (such as the Beatles and Madonna) are all registered trade marks. Short of an Act of Parliament (such as those associated with the Olympic Games), registered trade marks are without question the most powerful trade mark rights …

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Testimonials

Worthy of the Name represented and advised Australia’s iconic rock band Cold Chisel on the successful recovery of its domain name coldchisel.com. Read the testimonial from John Watson Management.

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