As any established business owner will tell you, there is a lot of value in the goodwill that comes with a company name. In this day and age, once the name is established, it may be of equal or greater importance to establish an online presence with said name. It’s fairly simple to register a domain name on the Internet but things can get complicated if someone other business has already registered the domain name.
The New Jersey Turnpike Authority is learning this lesson the hard way. It recently lost a dispute over the domain names NJturnpike.com and GardenStateParkway.com. According to a panel that resolves domain name disputes, the Authority didn’t have the requisite common law rights to the names. The panel pointed out that the state did not even file trademarks for the names until late in 1998 for the Garden State Parkway and in 2012 for the NJ Turnpike. Both roadways have been around since the 1950s. The domain names were both registered earlier in 1998.
The Authority asserted a protectable trademark by virtue of all the time and money invested in advertising the names, as well as developing goodwill and name recognition. They claimed that the marks were well established by the time that another entity registered the domain names and that the other entity had to be aware of the mark.
The other entity’s argument won out, however, because it registered the domain names some thirteen years before the Authority even applied for trademark registration.
In the end, the panel also concluded that the Authority did not prove that it held common law rights to the names before the other entity registered the domains. Without common law rights, there could be no bad faith on the part of the other party in registering the domains, and the other party was therefore entitled to keep using them.
This case is a prime example of the importance of registering trademark names and registering them early. The names are not only important to developing a brand but establishing on online existence, which is the future of business. Anyone considering registering for a trademark may want to speak with an intellectual rights attorney to ensure that the process is completed accurately.
Source: The Domains, “New Jersey loses again: UDRP Panel says they don’t even have rights to GardenStateParkway.com & NjTurk,” Michael Berkens, July 23, 2013