Those of you that have followed the OnlineNic threads will recall Verizon sued OnlineNIC and was granted restitution for a number of domains that were infringing on Verizon marks.

We briefly did some business with a company named Intermedia and noticed that they did not have the .com but they do have a registered trademark on Intermedia. A whois showed that Verizon owned the .com but did not have a trademark related to Intermedia.

We contacted Verizon regarding this and they responded saying that simply using a domain grants them the rights to continue control of the domain regardless of any service marks. This seems to be at odds with them suing OnlineNIC since OnlineNIC or their customers could of simply used the same defense.

Verizon continued in their letter to us that the domain dispute process does not require or favor trademarks. Really? Trademarks seemed to have been Verizons only standing when winning it's recent case with OnlineNIC.

I don't understand why Verizon has control of Intermedia.com, if I was representing Intermedia (intermedia.net) I would be going after it. All Verizon is doing with Intermedia.com is forwarding it to verizon.com.

They are doing the same thing that the domain squatters do.

Funny isn't it.

Here you go : http://www.icann.org/udrp/udrp.htm and then more importantly if they have a trademark : http://www.wipo.int/amc/en/domains

One thing to note, intermedia.com was registered in 1993, no US trademark is even close that that (using http://www.uspto.gov/ to searh).

So to be honest I dont think your client/ex-client has a leg to stand on.

But they can always try, hence the 2 links at the top of this post :)

It all comes down to timing. If you register a domain name before somebody gets a trademark, then you are probably OK. However, if you register a domain name after somebody gets a trademark, then you're probably going to lose.

We contacted Verizon regarding this and they responded saying that simply using a domain grants them the rights to continue control of the domain regardless of any service marks.

Heh, whoever replied that way is either new or smoking crack. There are exceptions, though.

Mgratton gave one idea. Another is you register a domain name-trademark namesake, yet isn't competing or "likely" to confuse people with the mark somehow.

But yeah, Verizon is no stranger to hypocrisy.

netearth, I would have to disagree with you. The domain thesimpsonsmovie was registered before the movie came out yet Fox or whoever was able to get the domain.

We might be talking apples and oranges here but im merely pointing out as Dave_Zan has said the hypocrisy. Verizon owns a domain that is nothing more then a forward to verizon.com. Perhaps it didn't start out like that but that's all it is now.

In 2010 a company owns the mark Intermedia and if the shoe were on the other foot Verizon would be going after the domain.

Intermedia is not a client of ours, in fact we don't do any business with them now however them not going after the domain probably just means they are afraid of Verizon. Verizon did say in their email that they are prepared to rigorously pursue ownership.

You are not going to lead me to believe that if something goes into a domain dispute that a web forward (not even a website) is going to win over a trademark. In almost all cases i've viewed that have been successful they all focus around registered trademarks.

Verizon has absolutely no property on intermedia.com, it's a web forward. If this defense worked then squatters would be far more successful at holding marked domains.

I don't understand why Verizon has control of Intermedia.com, if I was representing Intermedia (intermedia.net) I would be going after it.

A quick look around would seem it's plausible that Verizon probably acquired the domain (intermedia.com) via their subsidiary MCI Inc. [1] who in turn acquired it through their acquisition of Digex and their corporate parent Intermedia Communications who were operating the domain as far back as 1997 [2].

If they can prove ownership through a chain of acquisitions, for anyone else to get it they would have to let it lapse. In today's Internet that's probably only possible (but unlikely) by accident.

Regarding the possibility that they're just squatting on the domain, consider that the intermedia.com MX records all still point to mci.com hosts. Given that Intermedia Communications was an ISP, perhaps there are still customers wielding email addresses in the intermedia.com namespace, in which case the domain is actively in use. Perhaps this is the 'using' that they're making reference to in the correspondence you received?

[1] - http://www.wikipedia.org/wiki/MCI_Inc.
[2] - http://web.archive.org/web/*/http://intermedia.com

netearth, I would have to disagree with you. The domain thesimpsonsmovie was registered before the movie came out yet Fox or whoever was able to get the domain.

But was the domain registered before the show came out, probably not.


In 2010 a company owns the mark Intermedia and if the shoe were on the other foot Verizon would be going after the domain.

Chances are that verizon is only going to go after a case they are going to when. If somebody has registered a domain name prior to verizon acquiring a trademark in the name, then they will probably approach the owner to purchase the domain name rather than pursuing legal action, since they wouldn't win.


You are not going to lead me to believe that if something goes into a domain dispute that a web forward (not even a website) is going to win over a trademark. In almost all cases i've viewed that have been successful they all focus around registered trademarks.


To win a domain dispute, the filing party must show that the other party registered the domain name in bad faith to use somebody's trademark. If the filing party didn't have a trademark at the time the domain was registered, then by definition, there is no bad faith on the party of the registrant.

TDS-chriss, that's very interesting. I would all of forgot about this had Verizon not sent us a response, I really didn't expect to hear anything from them.

I guess if they had said something regarding what you referenced i'd of left it at that.

Jimmys allowed to be wrong once in awhile:)

I would consider sending a copy of that letter to onlinenic, if onlinenic shows that letter in their own lawsuit, magically, the would have to "correct" it, giving the domain if they want to win the onlinenic lawsuit.

You would probably get the domain intermedia.com without spending a single cent, and you would help onlinenic, they may be grateful ;-)

You and onlinenic can help each other