When Is A Domain A Trade Mark Infringement
Lets start from the beginning: the mere registration of a domain is not a trade mark infringement because it does not constitute trade mark use.
But, if a very well-known company name is registered as a domain name in the course of non-business transactions, the domain registration itself constitutes an unauthorised use of the name according to § 12 of the German Civil Code , according to the 2011 BGH decision shell.de. In such a case the company could claim that the domain holder renounce the domain name shell.de vis-à-vis DENIC.
Does this mean that before registering a domain name, one must first check whether any trademark rights exist for the domain name? No, that is not demanded.In any case, the DENIC, the registry for top-level domains with a German country code, does not check this as a matter of principle. And DENIC does not have to, because the allocation and administration of domain names does not per se constitute the use of a trademark in the course of trade. Only if DENIC is made aware of an obvious infringement of the law can it be required to cancel the illegal registration.
Important is the content of the registered domain: According to the German Federal Supreme Court , homepages with no content do not in principle constitute use that infringes trade mark rights, because the domain name is not yet associated with any specific goods or services there can therefore also be no likelihood of confusion .
Reasons Not To Trademark Your Domain Name
- Infringement If you register a domain name without checking if there is a similar name already registered, you could infringe upon another company’s trademarked domain name. A lawsuit involving trademark infringement could cost you $100,000 or more. Before registering your domain name, use the trademark tools on the USPTO website to find out if a domain name like the one you want is already trademarked.
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.
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Someone Is Using My Trade Mark In Their Website
This is nothing to do with the Internet registration authorities and currently is also nothing to do with the Internet service provider who hosts the website . Instead, whether or not you can stop this use of your trade mark will depend on national trade mark law. Your case should be stronger if you have registered your trade mark.However, a practical problem may again arise by virtue of the international nature of the Internet and world wide web .In practice, the website in question could be physically located in almost any country of the world and can then be accessed from almost every other country. As explained above, the same trade mark may be owned by different people in different countries and legitimate use of a trade mark in one country may infringe someone elses rights in another country, and vice-versa. In most countries, the law is such that it is currently not certain how to determine where the trade mark infringement is taking place and therefore where you can bring legal action to stop it, although information on a website such as language, currency, shipping information and contact details can all indicate the country in which consumers are being targeted . Again, we can advise and assist you on this.
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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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.
Domain Name Registration Passing Off And Trademark Infringement
Registering and using a domain name that is similar to a competitors for the sole purpose of redirecting traffic to ones website is a dirty practice. But like many other internet offenses, it does not always fit within traditional causes of action, including trademark infringement or its common law cousin, passing off.
Dentec Safety Specialists Inc. v. Degil Saftety Products Inc., 2012 ONSC 4721, is the latest Canadian authority to consider when the use of a domain name exclusively for redirect purposes will constitute passing off. It almost certainly becomes the leading authority, among very few, on the tort of domain name passing off in Canada.
In Dentec, the plaintiff and defendant were direct competitors, selling industrial safety products. For over five years, the plaintiff had operated a website at www.dentecsafety.com and had displayed this URL on its advertising materials. The defendant, meanwhile, advertised and sold its own products on a website at www.degilsafety.com. In February 2009, the defendant registered the domain name < dentecsafety.ca> and set it up so that internet users who typed it into a browser would be directed to the defendants website without notice.
To these, Justice Campbell added the following principles that appear unique, at least in Canada, to the domain name context:
Further proof, if we needed it, that courts will always find ways to punish what offends their sense of justice, regardless of the technology used.
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Can Internet Domain Names Be Registered And Protected Astrademarks Or Service Marks
Yes, domain names can also be registered and protected astrademarks or service marks at the national and internationallevels, provided that the domain names do satisfy all conditions tobe duly registered and protected like the trademark and servicemarks.
Any unique internet domain name which is capable of identifyingand distinguishing goods or services of a company from that ofother companies, and can also act as a reliable source identifierfor the concerned goods or services on the internet, may beregistered and thus protected as trademark, if it satisfies allother rules and requirements for registration which are commonlyapplicable to the trademarks and service marks. Again, for properregistration of a domain name as a trademark or service mark, thismust be unambiguously unique from all other domains names andwell-known trademarks on the internet, so that it does not mislead,confuse, or deceive customers of other companies engaged in thesame or different fields, or violate public order or morality. Suchcases may give rise to instances of trademark infringementlitigation. Exclusive information about registration and protectionof domain names as trademarks in India and abroad is provided inthe sections below.
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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Trademark Protection Vs Domain Name Protection
Trademarks or service marks are provided recognition andprotection in only those national and international jurisdictions,where these are properly registered these may not attain trademarkprotection worldwide. The domain names as trademarks or servicemarks are registered and protected at the entire global levelsupremely by only one organization which is ICANN , along with thenational and international protection under the directly concernednational Trademark Law and diverse International Trademark Treatiesof the world. Any national or international trademark law is notfully capable of protecting a domain name in countries of the worldover. To meet this vital objective, the ICANN with support of theWIPO prescribed thefollowing two strong and strict measures — a rigorous andcensorious system of registration of domain names with accreditedregistrars and an efficient and efficacious disputeresolution policy, named as the Uniform Domain Name DisputesResolution Policy .
For a dispute resolution under the UDNDR Policy of October 1999,a person or entity may formally complain before the competentadministration-dispute-resolution services providers , that:
Figure Out The Type Of Trademark
The first step that you need to do is to find a brand name for your business.
To ensure that your trademark fits on the US Patent & Trademark Office . The trademark must be non-intuitive, which means there should be no double meaning for the trademark.
The USPTO divides marks into four categories that will determine the strength of your trademark. From weaker to the strongest, youll in which category your trademark will exist.
Preparing your name for a trademark.
This is the most reliable type of trademark. There is an insignificant chance that a company or an individual will use this trademark. This comprises of made-up words and also words that are not associated with any product or business. For instance, if you have a shoe company, Brontox can be a unique name that you can use. It is fancy and unique at the same time, and there is no chance that anyone will be using this type of name.
As the name itself suggests, this kind of trademark is used to describe specific traits of the service or the product. The trademark type is not as strong as a fancy trademark, but still, you can get suggestive mark easily as it will be relevant to your business. A good example might be using Bright & Soft as a tagline for a t-shirt company.
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What Is The Difference Between A Trademark And A Domain Name
A trademark is any word, name, symbol, or design used alone or in combination to identify and distinguish goods as to their source. Trademarks help a business to distinguish its goods and services from others in the market. Customers rely on trademarks to make decisions about the goods and services that they patronize.
An intellectual property strategy is a critical part of any business plan. It is clear that even small businesses cannot afford to ignore the IP aspects of their business as they struggle to gain visibility in the competitive digital market. With the push for businesses to increase their brand value through legal protections such as trademark registration, it is important to understand some of the details involved in trademark registration.
Why Is A Domain Name Not An Intellectual Property Right
An intellectual property right is an intangible right which attaches to its tangible expression. As an intangible right, the benefit of ownership is that its owner has a right of enforcement. This enforcement right is one which is not necessarily subject to taking physical possession. Delivery up of tangible expressions of intellectual property rights illustrates enforcement by taking physical possession in an intellectual property context.
If a domain name is an intellectual property right then it can only be an intangible asset, the expression of which can only be the words or string of characters which may or may not direct a user to that particular server space containing further information. This string of characters often, but not always, fails to attract rights in itself as it fails to meet the requirements of being unique and distinctive essential for trademark registration. The most valuable domain names in industry are not trademarks. They are those not capable of trademark registration for lack of distinctiveness and being descriptive of the good or service to which it is trying to attach.
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