Why Register a Domain Name? Intellectual Property Protection to Start
by Nicholas Kanter
A political organization recently learned the hard way that possession, including possession of intellectual property, is nine-tenths of the law.
In January, after helping President Obama win reelection, Obama for America announced it was switching focus to a grass-roots organization and changing its name to Organizing for Action. The announcement was made before OFA registered the domain, www.organizingforaction.net.
On the day of the announcement, an individual named Derek Bovard registered www.organizingforaction.net. Initially, Mr. Bovard reportedly set the domain to redirect to the National Rifle Association’s website. Currently, the OFA website redirects to Dr. Benjamin Carson’s speech at the National Prayer Breakfast.
OFA filed a complaint with the National Arbitration Forum [the complaint was filed in accordance with Internet Corporation for Assigned Names and Numbers’ (ICANN’s) Uniform Domain Name Dispute Resolution Policy] seeking an order transferring the domain name from Mr. Bovard to OFA. In support of its complaint, OFA alleged:
- It owned trademark rights in the name Organizing for Action;
- Mr. Bovard’s www.organizingforaction.net is confusingly similar to OFA’s trademark;
- Mr. Bovard has no legitimate right or interest in the trademark; and
- Mr. Bovard registered the domain name in bad faith.
The arbitration panel found in favor of Mr. Bovard, concluding that OFA did not prove that it established trademark rights in its name prior to Mr. Bovard’s registration of the domain.
This makes sense as trademark rights are based on use, and OFA apparently did not use the Organizing for Action name before Mr. Bovard’s domain was registered. In fact, Mr. Bovard argued that he registered the domain at 5:46 a.m. on January 18, 2013, approximately nine hours before OFA legally become a group. Accordingly, the panel denied OFA’s request to transfer the domain name.
What should OFA have done differently? Clearly, before announcing the name change, OFA should have registered the domain. Unfortunately, OFA learned that conceptualizing a name is not the same as securing property rights in the name.
Nicholas Kanter is a Shareholder in our Business Litigation Practice Group. You may reach him via email: firstname.lastname@example.org.