How Can Domain Name Trademark Infringement Be Avoided
As a business owner who enjoys exclusive rights over business trademarks, it is important that you know how to avoid domain name trademark infringement, for the same reason as why you work to protect your brand reputation and identity. Fundamentally, resisting domain name trademark infringement and trademark infringement, in general, helps prevent anyone from riding off the back of the business you worked so hard to conceptualize, build, and preserve. It protects your consumers, too, such that they will not be misled by any misuse of your brands marks.
Can You Trademark A Domain Name
Your domain name may be an essential part of your brand. Among the millions of domain names out there, it can be difficult to establish your web address as part of your business identity. In simplest terms, a domain name is your website name and the unique address where Internet users can access your website. This web address may be the same as your company name, or it may not be. Either way, you may be looking for ways to protect your domain name as part of your brandand trademarking your Internet domain is one way of doing so.
Domains And Trade Marks: Whats The Difference
Your domain name and your trade mark may consist of the same word or phrase, but they are entirely separate entities. A domain name is an internet address ownership of a domain can be acquired by purchasing it from domain name registrars. The domain name registrar regulates the use of the domain name.
A trade mark is a sign that is capable of distinguishing the goods or services of one brand from those of another. A trade mark may consist of words, designs, letters, numerals, colours, shapes, sounds or motions and any combination of such signs. You can obtain a trade mark by applying for one with your countrys Intellectual Property Office.
A domain name can be registered if it is not identical to a previously registered domain name. A trade mark, on the other hand, may not be registrable if it is similar enough to a previously registered trade mark.
When registering a domain name, a brand may choose to register a name that describes the characteristics of the goods or services they are selling. Doing so can help inform search engines of a brands relevance with a particular enquiry for instance, fastbikes.co.uk for a bicycle vendor.
Another key difference is the duration of ownership. A domain name is valid for as long as the contracted period states: this is something that you will agree to when purchasing the domain name. Usually, youll be able to renew ownership of your domain name when the end of this contracted period approaches.
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When Does A Domain Name Affect Trademark Rights
The short answer is nevera domain name, by itself, cannot confer any trademark rights on the domain name owner. This is because a domain name, by itself, does not create a consumer association between a company and its products. However, a businesss website that advertises or sells the companys products or services can create this type of consumer association. In this sense, however, the content of the website itself creates trademark rights, not necessarily the domain name.
How Do I Check The Availability Of A Domain Name
Because a domain name must be unique, it is only available to one user. The availability of a domain name can be determined by searching the website of an ICANN approved online registrar of domain names. The websites InterNIC and ICANN list the approved registrars.
If a domain name is unavailable, it is easy to determine the owner. A search on a site like www.whois.net will retrieve the contact information of the owner. In some cases, it may be impossible to locate the owner when the applicant provides false information to the registrant.
If the owner is a cybersquatter, a person that registers, traffics, or uses a domain name with the intent to sell it for profit, it may be possible to still acquire the domain name when it is registered in bad faith. There are two options: sue the squatter under the Anticybersquatter Consumer Protection Act or have the case arbitrated by ICANN. Arbitration is far less costly than suing the cybersquatter.
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Reasons To Trademark Your Domain Name
- Maintain Your Rights If your domain name has a trademark, the URL has protection under the USPTO law. There are legal ways for you to stop another company from using your trademark.
- Protect Your Image When a company is selling a lower quality product that consumers might confuse with your merchandise, your image is at risk. Protecting your domain allows you to maintain control of your online image.
Trademark Registration For Domain Name
Domain names obtain trademark registration at both the national and international levels, provided the domain names satisfy all the conditions required to obtain a trademark registration. A unique internet name capable of distinguishing and identifying services or goods from others can be registered as a trademark.
The domain name must act as a reliable source identifier for the business goods and services on the internet to be registered as a trademark. A domain name as a trademark must be unique from all other well-known trademarks and domain names on the internet so that it does not deceive or mislead customers of other companies or violate morality or public order.
In a case before the Supreme Court of India, Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., the matter for consideration was whether Internet Domain Names are recognisable as other Intellectual Properties such as Trademarks. The Supreme Court, in its judgement, held as follows
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How To Trademark A Domain Name
By AllBusiness Editors | In: Internet, E-commerce & Social Media, Legal
A trademark is a distinctive name, symbol, motto, or design that legally identifies a company or its products and services. Your domain namethe word or phrase that identifies your website may qualify as a legal trademark if you use it in commerce or if you notify the U.S. Patent and Trademark Office that you intend to use it in commerce.
Although you dont need federal registration to establish your right to a particular trademark or to begin using a trademark, its still a good idea when it comes to a domain name. The Ninth Circuit U.S. Court of Appeals recently ruled that a business must use its domain name to sell goods or services in order to protect the nameeven if a competitor starts to use the name after you registered the domain. In other words, merely reserving a domain name isnt enough.
Fortunately, its easy to register your domain name as a trademark.
Should I Trademark My Domain Name
To protect your brand from infringement, you may want to trademark your domain name in addition to a logo, slogan, or design. Registering a domain with a service like GoDaddy or Bluehost does not give you trademark rights. It simply identifies your website and will not prevent others from using the name. If you trademark your domain name, your domain will have protection under the law.
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Conduct A Trademark Search
Before you register a domain name, conduct a trademark search to find any trademarks that conflict with the name you want. If the PTO declines your application to register a trademark because it conflicts with an existing trademark, the government will still charge the filing fee. You can do your own trademark search at the U.S. Patent and Trademark Office Web site, or you can hire someone to do it for you.
Note: Its a good idea to do a trademark search even before you register your domain name, since domain registrars are not obligated to check if a requested name violates an existing trademark. In other words, getting the domain name you request says nothing about whether it will conflict with someone elses trademark. And if you do receive a domain name that creates a trademark conflict, you could lose the right to it if the trademark owner takes legal action against you. Read Trademark Infringement for more information on this topic.
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Adding A Layer Of Protection To Your Brand Is Often Smart Business
Imagine that you have a trademark on the name of your business. The purpose of trademark law is to prevent consumer confusion, so as to ensure that consumers can recognize the true source of particular good or services. The trademark prevents, for example, a competing business from opening up across the street using the same name.
In the 21st century, the name of your website URL is just as important as the name on the front of your store. Fortunately, trademark protection also applies in the digital world. If another business attempts to register a domain name that is the same as your business name, you can seek relief in court to stop them.
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Right To Injunctive Relief
It can therefore be summarised that a possible trademark infringement can only be asserted once content has been published under the domain name then there may also be a claim for injunctive relief. In such a case, however, only the infringing use of the name/trademark right must be ceased but not the further use of the domain.
Specifically, in the case of a justified claim for injunctive relief, it must be ensured that the use of the domain name corresponding to a protected trade mark is no longer used in the course of trade to identify and advertise goods or services for which trade mark protection is claimed. In the event of infringement, there may even be a claim for damages.
However, there is no right to a domain transfer in German law and for domains with the German country code .de.
In its shell.de decision, the Federal Court of Justice ruled that the entitled party is not entitled to an overwriting claim against the non-entitled holder of a domain name, but if at all only to a claim for deletion of the domain. The right to register a domain name is neither comparable to patent law vindication according to § 8 sentence 2 PatG nor to the register correction claim according to § 894 BGB, the BGH had made clear.
Why Was Voxs Trademark Application Denied
Upon examination, the USPTO found that the domain name .SUCKS did not function as a trademark. Although Vox tried to assert that .SUCKS crossed the line into being a service mark, the USPTO rejected the argument. On appeal, the TTAB concurred with the USPTOs decision, concluding that .SUCKS did not act as a source identifier. The TTAB also found that the stylized pixelated version of the mark was not distinctive enough to carry the overall mark into registrability it rejected both the stylized mark and the standard character word mark trademark applications.
Vox only appealed the TTABs determination concerning the stylized mark. The Federal Circuit found that there was no error in the TTABs decision as the design was not inherently distinctive to be registered as a trademark. Specifically, the court noted that a stylization can make a mark registrable if the designs features create an impression on the purchasers separate and apart from the impression made by the words themselves. The analysis is subjective and must be determined based on a viewers first impression.
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Is My Domain Name A Trademark
This is not only a common legal question but also a great question as the answer is it depends!
A domain name simply is an address on the Internet. Computers find web addresses by a series of numbers known as an IP address. To make the process more user friendly, the numbers are matched to words that, hopefully, can be easily remembered. The best and most valuable domain names are very descriptive, and very easy to remember. Cars.com is a great domain name if you are in the business of selling cars.
A trademark identifies the particular source of goods or services and is essentially a brand name. In order to identify a particular source, a trademark must be something more than the generic name for the product or service. For example, if I refer to a computer, I have not told you anything about the source of the product. On the other hand, if I refer to a Dell computer, I have identified a particular source and brand. The trademarks that receive the most legal protection are those that are not descriptive at all.
It is this function of a trademark that makes some domain names trademarks and stops others from ever being trademarks. Ebay.com is a trademark. It not only provides an address on the Internet, but it also tells us a particular source of online auction services.
What Else Can Be Done To Prevent Domain Name Trademark Infringement
Admittedly, taking these above-mentioned steps in preventing domain name trademark infringement is easier said than done. Of course, business owners have a lot of things going on in the operation of their business and having to go through all of these steps manually, on top of their regular business activities, maybe too much to handle.
Fortunately, there is a way to automatically detect and monitor domains that take advantage of your brand, make corresponding claims against domain owners, and secure your domain portfolio from external threats.
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Can I Trade Mark A Domain Name
While owning a domain name wont automatically grant you the rights to a registered trade mark, you can trade mark a domain name to receive legal rights over the name in the country where the trade mark was granted. This will prevent others from using a similar domain and help you to boost visibility of your brand online.
In order to receive a trade mark for a domain name, it must be used as a trade mark. In other words, the domain name itself must function to identify the source of particular goods or services. For example, Amazon.com identifies the source as Amazon.com. However, if your brand name is Smith Jacobs & Lyle and your domain name is sjl.com, the sjl does not identify the source of the products its just an address on the internet. Just like all trade mark applications, this comes back to distinctiveness: anyone else may use the letters s, j and l in that order, such as a firm by the name of Shaw, James & Lambert. SJL says nothing to distinguish you or your goods/services from others.
On the other hand, Sportsdirect.com is an example of a domain name that could be registered as a trade mark. Why? Well, not only does it identify the source of the goods it sells, but this domain name is more than just a URL address its used across marketing and promotional materials, in both on and offline settings.
How Is A Domain Name Different From A Trademark
To recap, a trademark is any recognizable sign, logo, symbol, unique name or design aspect that allows consumers to distinguish a business from another. By way of analogy, a trademark is like a business or companys fingerprint that sets it apart from all other business enterprises.
Business trademarks are protected by intellectual property laws, specifically trademark laws. This set of rules deals with intellectual property protection that encompasses anything that has to do with brand identity. It covers trademark registration, registration duration, regular and active use of a trademark, remedies to enforce exclusive trademark rights, among others.
On the other hand, a domain name is simply the unique string of characters that brings users to a specific website on the internet. While most business owners, obviously, would want their business trademarkthat is, their business nameas their domain name, domain names, in themselves, are not what trademark laws cover and protect. To iterate, a domain name is simply thatthe name of a domain that forms part of an internet address.
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Why Trade Mark A Domain Name
There are several reasons why you should consider trade marking your domain name. Trade marks are generally:
- more valuable than domain names
- more easily protected, both under common law and statutory protection
Trade marking your domain name will:
- give you legal rights over the name in the country where the trade mark was granted
- prevent others from using a similar domain, if this would cause your business disadvantage or disrepute
- reinforce your brand name and ensure visibility of your business online
Contact An Experienced Trademark Attorney
Trademarking a domain name can be complex and it is important to have a skilled trademark attorney on your side who can guide you through the process. Located in Ann Arbor, Michigan and serving clients nationwide, the Trademark Lawyer Law Firm, PLLC assists business owners and entrepreneurs with a wide variety of trademark matters. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help.
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How Are Conflicts Resolved Between Domain Names And An Existing Trademark
If a company already owns a federally registered trademark, it does not necessarily prohibit someone else from owning the domain name. There are some circumstances when a trademark owner can prohibit the use of a domain name.
- It infringes on a federally registered trademark: If another company uses a domain name that is similar to a trademark and is engaged in a business providing similar goods or services, the trademark owner may prohibit its use under trademark law. This is because the similarity between the trademark and the domain name may confuse consumers.
- It dilutes a famous trademark: If the commercial use of a domain name dilutes or tarnishes the reputation of the famous trademark, the use of the name may be terminated under trademark law.