Yesterday this site posted a story about Ed Lover’s dispute over the domain name C’mon Son.  Basically Ed Lover has been using the phrase “C’mon Son” as a catchy phrase during his You Tube videos and to name his video episodes.  Arguably we can conclude that Ed Lover does have a trademark right to the phrase “C’mon Son.” Trademarks can be words, phrases, tag lines, or logos that identify a product or service offered to the public.  In Ed Lover’s case, the video episodes entitled “C’mon Son” are multi-media products offered to the public  for consumption.

For sake of argument, lets assume Mr. Lover does have a valid trademark to the phrase “C’mon Son” and he wants to register the phrase as a domain name for the launch of his new website.  However, a cybersquatter (one who purchases domain names of trademark owners purely for sale) purchases the domain name first and demands payment of $5000 to release it.  What can Ed Lover do legally to rightfully obtain the domain name from the cybersquatter?

1. First he can hire an attorney to write a simple letter conveying his trademark right in the domain name and demanding that the offender transfer the domain name to him, the rightful trademark owner.  Only the owner of a trademark has the right to use the name to identify any product or service.  This rule also applies to domain names.  An attorney will argue that the cybersquatter is infringing on the trademark of the owner and expressly demand that the cybersquatter cease and desist using the name immediately or further legal action will occur.

2. If the cease and desist letter  does not work, Ed Lover can file a domain name dispute with ICANN.  ICANN, the Internet Corporation for Assigned Names and Numbers, is the governing body for internet (domain) names.  ICANN has a dispute resolution procedure to resolve domain name disputes.  In order to file and be successful at a domain name dispute, Mr. Lover must show the following:

a. The domain name is identical or confusingly similar to the trademark the domain name owner has in the domain name;

b. Demonstrate that the offender registered the domain name in bad faith, i.e., they registered the domain name to divert traffic from his site; to cybersquat (sit on the name in order to strong arm the owner into purchasing it); or the offender registered it to prevent the rightful owner from doing so. Mr. Lover can certainly prove his case here!

c.  Show that the offender does not have any valid rights or use for the registered domain name. For example, they do not own a business that includes the domain name or they or their company is not generally known by the domain name.

The cost to file a domain name dispute with ICANN is $2600 for a 3 member arbitration panel and $1300 for a single member arbitration panel.

If Mr Lover has not already registered the trademark “C’mon Son” or applied for registration, I would suggest he do so immediately.  Trademark registration is good evidence that he legitimately owns the trademark in question.  It definitely helps when presenting a case before ICANN.

Remember register your business’ domain name as soon as you present the business to the public.  This simple step can save you time and money.