Trademark Use and Trademark Infringement in Domain Names | Dunlap Bennett & Ludwig LLC

Trademark rights and domain name ownership overlap in many ways, but they are not the same. Ownership of a domain name does not necessarily establish trademark rights, and ownership of a trademark does not necessarily give you the right to own the corresponding domain name.

I am often approached by clients who have received a cease and desist letter regarding their website or domain name and have been surprised to learn that someone can still accuse them of trademark infringement despite the fact that they own the domain name containing the mark in question. Similarly, I have also been approached by clients who have recently received a trademark registration who believe that the trademark registration allows them to find the corresponding domain name turnover. There is some misunderstanding regarding the interplay between trademark rights and domain name ownership.

What is a registered trademark?

In order to fully understand how trademark rights and domain name ownership influence and differ, it helps to start with a basic understanding of both. In general terms, a trademark (also sometimes referred to as a “service mark”) is a name, logo/design, or slogan used to promote a business. A business does not need to register the mark to have rights (but registration provides stronger rights). On the contrary, trademark rights arise whenever a mark is “used in commerce” – whenever the name, logo or slogan is used in connection with the products or services offered by the company in such a way as to create an association in the minds of consumers linking the brand to the company. Every time a can of Coca-Cola® is placed on a grocer’s shelf, or every time a box of fries displaying the McDonald’s® “golden bows” logo is handed to a hungry child, those famous marks are “used in commerce”. “Therefore, a trademark is something that establishes a connection in the minds of consumers between a particular product or service and the company providing that product or service.

Once trademark rights are established, they are not absolute. For example, McDonald’s® would have difficulty using its trademark rights to prevent another company from using the same name for an information technology (IT) consulting business (although for very famous brands, the doctrine dilution of the mark can be used to prevent such uses). Indeed, trademark rights are limited not only by the mark, but also by the type of goods or services with which the mark is used. That’s why there may be a leading national airline and also an independent company selling plumbing fixtures that both do business as Delta.®

What is a domain name?

A domain name, on the other hand, is a string of characters that serves as an identification string for Internet addressing purposes. When a domain name is entered into a web browser, there are Domain Name System (DNS) rules and procedures that tell the browser the location of the server where the corresponding website files are hosted. Accordingly, a domain name is something that establishes a connection for internet users between a specific string of characters and the location of the owner’s website content files.

When does a domain name affect trademark rights?

The short answer is “never” – a domain name, by itself, cannot confer any trademark rights on the owner of the domain name. Indeed, a domain name, in itself, does not create a consumer association between a company and its products. However, a company’s website that advertises or sells the company’s 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.

When does a trademark affect domain name rights?

In general, domain names are a “first come, first served” commodity. The first person to purchase a given domain name retains rights to the name until it is sold or the registration term expires. This is usually the case even when the domain name is a trademark. If I happen to register before the coffee company, the coffee company may need to publish their website to a different domain name address until my registration expires.

However, there are some exceptions to this rule. “Cybersquatting” occurs when someone registers a domain name containing a trademark without a legitimate purpose and simply to prevent the trademark owner from having it (or reselling it to the trademark owner at a considerable profit).

In the event of cybersquatting, a trademark owner can request the restitution of a domain name that contains a trademark. There are several different procedures to achieve this. However, in general, a trademark owner must demonstrate that the domain name was registered in bad faith and with the intention of profiting from the trademark in question and that the domain name is similar to the trademark in question.

In determining bad faith, a court or other tribunal will consider the strength of the trademark owner’s rights, whether

  • the owner of the domain name has a legitimate right to the name,
  • the domain name has been used for legitimate business purposes,
  • the owner of the domain name has displayed an intention to divert customers from the brand owner’s site,
  • the owner of the domain name has offered to sell the name for profit, or
  • the owner of the domain name has registered several domain names similar to trademarks, among others

A trademark owner can recover an incorrectly registered domain name in these situations.

Although there are significant areas of overlap between the use of trademarks and domain names, the two sets of rights differ both in how they are acquired and how they affect each other. one another. A business with an online presence should pay close attention to both sets of rights when building a brand and investing in online advertising.

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