Firm’s client gets domain names transferred from competitor

Pursuant to the rules of the Internet Corporation for Assigned Names and Numbers (ICANN), an arbitrator has ruled in favor of the firm’s client in a dispute over two domain names.

The domain names in question were SouthernInkAndThreadLLC.com and SouthernInkAndThread.com. Our client—Southern Ink and Thread, LLC—has a common-law trademark for these names and uses them in marketing its screen-printing business. The owner of a competing screen-printing business registered the two domain names and they “resolved to” (or redirected Internet users to) the website for the competing business.

The arbitrator ordered the domains to be transferred to our client because—

1. They were similar to the trademarks of our client.
2. The use was not a bona fide offering of goods or services under the ICANN policy, and competing business owner had no rights to or legitimate interest in the domain names.
3. The domain names were registered and used in bad faith to divert business from our client to the competing business.

Ann Dennen and Mike Rich represented our client in this case. See claim FA1504001614982, in which a decision was issued on May 27, 2015.