Final Word On Trademarks And Domains
If you own the trademark registration, you dont necessarily have any rights to the corresponding domain name or web address. You can potentially assert rights to the domain name in certain cases, but not many. Proving bad faith on the part of other domain name registrants can be extremely difficult, if you can even get their contact information to begin with.
While legal remedies exist, they are not always worth the effort. You need to examine your specific situation, including the value of your trademark, before proceeding. Each case will require a different course of action.
Domain name issues can be complicated. Contacting a trademark law firm is usually best for specific legal advice about your case.
What Is Domain Name Trademark Infringement
To better understand the concept of domain name trademark infringement, it is important to first recall what trademark infringement, in general, is. As previously discussed, trademark infringement occurs when an existing logo, phrase, or such other identifying feature on a business product is likely to cause consumer confusion as to the source of those goods. Simply put, it is the unauthorized use of a trademark or service mark, which tends to confuse a consumer as to the product, service, or the business as a whole.
In relation to this general concept, domain name trademark infringement thus occurs when a person or entity acquires and/or uses a domain name that is otherwise protected by a trademark. While these persons or entities may logically argue that they enjoy the right to keep the domain name by the mere fact of their prior registration, this right is not absolute.
What must be emphasized is that trademark protection rights generally prevail over such domain name registration and ownership rights.
When Does A Domain Name Qualify As A Trademark
A trademark is a name, symbol, logo, or other device used to identify and distinguish a product or service from other competitors. Not every domain name will qualify for trademark protection. The use of common or generic names will not usually meet the criteria of a trademark. Domain name trademark applies to a domain name if:
- It is distinctive or its distinction results from consumer association of the name and the Internet business and
- The owner of the domain name was the first to use it in association with the sale of goods or services.
When trademark law protects a domain name, the owner has the right to prohibit the use of similar names or misspelled names by others.
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Contact The Domain Name Registrar
After reaching out to the domain owner or registrant, you may not receive a reply. In that case, you may want to contact the registrar and ask them to forward your inquiry to the domain name registrant. Registrars are not required to do this, but they may do it out of courtesy.
Even with anonymity, it is still possible to start a conversation about potential legal issues or sale negotiations concerning a domain. If reaching out is unsuccessful, litigation might be your next option.
Minc Law Tip: Before making an offer to buy a domain name, we recommend that you first speak with an experienced internet attorney. During your attorney consultation, you can explore all legal options and identify the reasonable costs you will incur should you pursue litigation. Having this information will let you know how large of an offer to make when trying to buy a domain name.
Do We Need To Register A Domain Name
Strictly speaking, no. But realistically, a domain name is an important part of your company’s online presence and branding.
If you have a website, it needs an address. Similarly, if you want to send and receive email, you need an email address.
Unless you register a domain name, you will have to use addresses allocated by your internet service provider or email supplier.
For example, your ISP might let you use the website address ourcompany.ispname.com and email addresses like. However, addresses like these have several disadvantages:
- They do not give you a professional image.
- If you change your ISP, you may have to change website and email addresses.
- Customers will not be able to find your website by guessing the address.
Registering a domain name helps overcomes these disadvantages.
Choosing the right domain name can also help establish rights to your trading names or trade marks and prevents other businesses from using that domain name.
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Uspto Reviews Statement Of Use
A statement of use must meet minimum filing requirements before an examining attorney fully reviews it. If the SOU does meet the minimum filing requirements, then the examining attorney reviews it to determine whether it is acceptable to permit registration. Submission of an SOU does not guarantee registration. You may not withdraw the SOU and the filing fee will not be refunded, even if the SOU/application is later refused registration on legal grounds. If no refusals or additional requirements are identified, the examining attorney approves the SOU.
If refusals or requirements must still be satisfied, the examining attorney issues you a letter stating the refusals/requirements. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and the statement of use is approved, the USPTO issues a registration within approximately two months. If all issues are not resolved, the application will abandon.
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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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When Is A Domain Name A Trade Mark Infringement
3. December 2021
A trade mark owner demands the surrender of a registered domain name: what now? You dont have to follow this: there is no right to transfer a .de domain. In exceptional cases, however, the deletion or modification of the domain can be demanded.
In principle, anyone can register a domain name one checks whether a desired domain is still free, i.e. not taken, and registers for it. This often only becomes a dispute years later: the owner of a trademark demands that the domain name with the same name be transferred to him. Rightly so?
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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What Should We Do If Another Business Claims They Have The Right To One Of Our Domain Names
You need to assess the merits of their claim. You also need to think about the costs and likely outcome of any dispute resolution procedure or court case.
Faced with the threat of legal action by a large, well-funded company, smaller businesses often decide that their best course is simply to concede a disputed domain name and to negotiate appropriate settlement terms.
On the other hand, if you have invested significantly in building your internet presence, this may not be a satisfactory outcome – and you may have a strong case for defending a claim.
Domain Names Vs Trademarks
19 May 2021
In todays digitally connected world, having a great product is simply not enough. No matter how ground-breaking your idea, youll need a website if your business is going to succeed.
A website can be make or break, and every great website starts with a strong domain name.
A domain name is a marker of credibility. Its the binary equivalent of a sign on your bricks and mortar store it can increase brand awareness and separate you from your competitors. Just like your brand name, your domain name can have a huge impact on how you are perceived by your target audience.
Some brands aim to have their domain name match their brand name, for the obvious reason that its easily identifiable and memorable for the consumer. If the website can be discovered by simply typing the brand name and the relevant domain extension e.g. .com. or .co.uk, the hurdle of a search engine is removed. Others choose a domain name that describes their products, such as electricappliances.com this approach seizes the competitive edge by capitalising on a descriptor that could be used industry-wide.
Either way, a great domain name should be simple, easy to remember and fool proof.
Now, lets say youve decided to opt for the first approach. Having chosen a strong brand name and successfully registered it as a trademark, you might assume that your right to this mark extends to the internet or more specifically, your domain name.
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Domaingrabbing: The Goal Is Lucrative Resale
What is the legal position on domain grabbing, i.e. the registration of domains with the aim of being able to sell them on lucratively for example to trademark owners? Is that legally permitted?
In most cases, yes, because trading in domains is considered a permissible business activity, and even a de facto blocking of domains does not justify a claim for injunctive relief, ruled the Federal Supreme Court in 2016 as long as the owner does not use the domain name for other purposes.In this BGH decision, the domain holder had actually used the domain, namely to redirect to a third website. The BGH ruled that this was a use of the domain name as a trade mark and could in principle constitute a commercial use of the domain name and referred to Bettinger in Bettinger loc.cit. para. DE 149. However, because the court of appeal had not dealt with this, the BGH overturned its decision and referred it back for a new hearing.
Incidentally, the registration of the top-level domain .com does not justify a presumption of commercial use. This is because although it was originally introduced for commercial use, it is open for registration to anyone . Many disputes about domain names are asserted and also settled through the international UDRP procedure ) but this does not apply to domains with the German country code .de.
Managing Domain Name Disputes
Having a federally registered trademark opens up different avenues for enforcing your rights in your domain name against infringers. For example, by registering a domain, all domain holders will be subject to ICANNs dispute resolution policy, the UDRP. Domain holders, as discussed above, can also bring suit under the ACPA. Claims under the UDRP or the ACPA both have their benefits and drawbacks, but each is appropriate under similar circumstances.
Filing a UDRP Complaint
Filing a complaint under ICANNs UDRP can be invoked either by filing suit in court or submitting a complaint to an ICANN-approved dispute resolution service provider, such as the National Arbitration Forum. Complainants must demonstrate that: their domain name is identical or confusingly similar to the complainants registered trademark the alleged infringer has no rights or interests in the challenged domain name and their domain has been registered and is being used in bad faith.
The UDRP identifies several factors to determine if an alleged infringer is acting in bad faith, including whether the alleged infringer registered the domain to prevent the trademark owner from reflecting that mark in a corresponding domain name , or whether the alleged infringer registered the domain solely for the purpose of disrupting a competitors business.
Filing Suit under the ACPA
More detail on what is required to bring a successful ACPA claim can be found here.
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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.
Can I Buy Domain Names Without Hosting
You can buy a domain name without hosting. However, you need some sort of hosting solution to set up a website.
It can be a good idea to buy a domain name without hosting if you want to grab a particular domain while its available, but you arent yet ready to create a website. Holding a domain name before you get your first website online will only cost you around £20 a year.
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Same Name Authorisation For A Domain
A strong argument for the right to a domain is always ones own name. Incidentally, this was also the case in the shell.de decision cited above: The domain holder was Dr Andreas Shell. And actually, in the case of several entitled name holders for a domain name, the principle of First Come First Serve applies. Since there are equal interests, the person who first applied for registration for the domain is entitled to it.
However, this principle is overruled when it comes to very well-known names. Well-known names of a company have priority over ordinary citizens with the same name, was decided both by the BGH in the shell.de case and the OLG Hamm in the krupp.de case . Incidentally, the same also applies to famous place names / municipalities.
According to the Federal Court of Justice, the decisive factor for assessing whether someone is so famous that he has priority on the domain is the public awareness and whether the public expects a homepage under this name, but at the same time the owner of the domain cannot prove any special interest in this domain in particular .
I Have A Domain Name With A Different Registrar Can I Transfer It To Domaincom
Yes. You can transfer either the domain registration or simply update the DNS at your current registrar to point to your Domain.com hosting account, or both. We would recommend both hosting and maintaining the domain registration with us in order to ensure the optimum support experience.Learn more about transferring your domain to Domain.com, or start your transfer now.
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Inactive Websites And Cybersquatting
What if there isnt a company actively using the PHILOSOPHYPROGRAMS.COM domain? What if the website is merely inactive, with just a generic landing page or a holding page? Since no one is actively using the domain, it might seem as though you have a claim to it.
In a few cases, you might. But unless you can prove a bad faith registration, you might not have any claim at all to that domain name. If you want to use it for your business, youll have to acquire it from the current owner.
What about cybersquatting? The intricacies of cybersquatting confuse many people. The practice was much more widespread in the internets early days, when companies didnt realize its necessity. Opportunities for cybersquatting are far fewer today.
The Anticybersquatting Consumer Protection Act does provide trademark owners with some rights when dealing with bad-faith registrations. That is, the owner of the PHILOSOPHY PROGRAMS trademark must prove that someone else registered PHILOSOPHYPROGRAMS.COM after the owner of PHILOSOPHY PROGRAMS filed a federal trademark application or otherwise possessed a distinctive and recognizable common law trademark. Even at that point, the trademark owner has further burdens of proof.