This article is written by Nimisha Dublish a student at the Vivekananda Institute of Professional Studies, GGSIPU, New Delhi. This article will dive into the aspects of domain name trademark protection in the US and cover registration, protection, dispute resolution, and the relationship between domain names and trademarks.
It has been published by Rachit Garg.
Introduction
Domain names are a crucial part of any business’s online presence. It is to simplify access to various resources available on the internet. You must have seen various domain names ending with ‘.com’, ‘.us’, etc. Officially the United States ‘country code’ is ‘.us’. For most companies, a domain name is their online identity. It is what customers, partners, and other stakeholders use to find them online. Therefore, it is important to protect these domain names from any unauthorized use or infringement. This is especially important for businesses that operate in the United States, as US trademark law does not grant any trademark rights by virtue of domain name ownership. Therefore, it is important for companies to make sure that their domain name and trademarks are protected from potential infringers.
Every website has a numeric address, for example, ‘243.231.44.1’, but it would be impossible and impractical to use and remember these numeric web addresses. This is mainly because of two specific reasons. Firstly, these numeric addresses are unstable in nature which means that whenever there is a shift in the computer system or business practices, this will lead to the reconfiguration of the computer system. Secondly, it’s humanly impossible to remember multiple numeric figures and one can easily forget these. Hence, the domain name system vanishes these two major issues and helps to access a site easily. Short and simple domain names like ‘super. law’ are easy to remember as compared to long chains of numbers.
In today’s era of digitalization, the protection of domain names becomes a matter of utmost importance. In the digital age, domain names no longer serve as addresses of internet communication but also serve as a crucial business identifier, which helps people and organizations distinguish between the businesses and services of different companies globally.
The question that arises is can I protect and register my domain name as a trademark/servicemark or not? The answer to this dilemma lies in the conditions mentioned for the registration of a trademark. Domain names can be protected and registered as trademarks or servicemarks at both national and international levels; provided they fulfill and comply with the necessary registration conditions. The basic requirement to start with is a unique internet domain name. A unique domain name should be chosen that is capable of identifying and distinguishing the goods and services from those of other companies’ goods and services. An element of unambiguity must be there in the domain name, making it stand out from its competitors in the market. This will in turn reduce the confusion and save customers from fraud and deception.
The US Patent and Trademark Office (USPTO) is the governing body that oversees domain name trademark protection in the United States, but domain names are not registered with the USPTO but with an accredited domain name registrar. The USPTO has established a set of rules and regulations that govern the registration and protection of domain names. Companies must register their domain names with the USPTO to receive trademark protection.
The rules and regulations mentioned explain that the internet domain name can be registered in the form of a trademark or a servicemark given the condition that it functions as an identifier of the source of goods or services. Uniform Resource Locator (URL) like ‘http://www.’ and Top-Level Internet Domain name (TLD) like ‘.com’, ‘.org’, etc. do not serve as indicators. They are not indicators of the source of goods on the World Wide Web (WWW). The TLDs signify the type of entity that is using the domain name and do not function as source indicators. Its addition to an otherwise non-registered mark cannot render it as registered. The commercial impression of the mark (as a whole), including the TLD, must be evaluated. The evaluation must be done to determine whether it conveys/sends a distinctive source of identifying impression. In an exception, the TLD may create a distinctive mark.
In this blog, we will discuss the importance of domain name trademark protection, the different types of protection available, and best practices for domain name trademark protection.
Trademark Law of the US
Before going directly into the understanding of domain names, let’s first understand and get some background of US trademark law. The increased commercial use of domain names and arising disputes led the Courts and legislature to re-think about the existing legal norms. There is a well-defined system to register a trademark but it need not be registered to avail protection. If there exist hundreds of co-existing businesses with the same name, only one of them can be registered and own up to that domain name. In the US, a trademark can only be reserved 3 years by registering in good faith but it’s not protected until it’s used.
Domain name system has created a shortage for many businesses and even governmental organizations. Here comes the second-level domain name. It functions very similar to the trademark or trade names.
So, in the US trademark issues and rights may arise under either federal or state law or both. The statute that comes under the federal trademark law is called the Lanham Act. This Act applies to both trademarks used in US interstate or International commerce. However, most digital and technical software companies have International operations, so they rarely focus on state trademark filing. Though trademarks are different from domain names, they still overlap with trademark law because they also serve as an important factor in identifying products and services.
What is a Domain Name
A domain name is a unique address that is used to identify a website. It is usually composed of two or more parts, separated by a period (.). The first part is the name of the website, and the second part is the suffix (or top-level domain), which identifies the type of organization that owns the website. For a domain name to be registered, one must ensure that it meets the criteria for trademark registration. It has to be distinctive and not generic. It must be capable of getting identified and distinguished from other goods or services associated with it. It should not be infringing on existing trademarks. For example, the domain name www.example.com has the name “example” and the suffix “.com”. For example, the domain name www.super.law has the name “super” and the suffix “law”.
Domain names are essential for businesses that want to establish an online presence. Industry 4.0 and the digitalization of business have made domain names play a very crucial role in establishing and retaining an online presence. This helps businesses enable communications and collaborations with stakeholders. The following must be considered: digital transformation and industry 4.0, the importance of domain names, choosing a domain name, its registration and management, and security/cybersecurity. With a strong basic understanding of domain names in the context of Industry 4.0 along with digitalization, one can establish and maintain a strong global online presence and brand enhancement.
Without a domain name, it would be difficult for customers to find a website. Furthermore, domain names are important for branding and marketing purposes. Companies can register a domain name that reflects their brand, making it easier for customers to remember and associate the company with its website.
Domain name trademarks carry an emotional quotient with them. Selecting a good brand name is a type of creative art. You need to keep in mind so many things like relativity, easy to remember, uniqueness, etc.
Is Domain Name an intellectual property
The domain names do not carry the characteristic of being Intellectual Property inherently. They can only be considered Intellectual Property when it meets certain criteria. To be able to be considered intellectual property, it needs to change its functions and role as a trademark. However, not every domain name can be trademarked. The domain name needs to be something unique and specialized to be termed as a trademark. It needs to fulfill the standards that apply to other marks as well.
Trivago.com, microsoft.com, amazon.com, etc. all have qualified to be trademarks because the consumers have developed the knowledge of its existence and its use. Even the content of the website from infographics to videos to almost everything on the website, is protected by the copyright. Likewise, the business names, logos, and moto of the companies that appear on the websites are protected by trademarks. If these are unregistered trademarks then it will be governed by the common law rights.
The domain name in itself is not an intellectual property. These are mere addresses that create a path to a specific place that contains intangible information. Trademarking these domain names gives them a tangible existence. Generally, these domains are considered intangible assets of the organization. They add value to the business by way of trademarks, marketing strategy, etc.
Difference between trademark and domain name
| S. No. | Basis | Trademarks | Domain Names |
| 1. | Purpose | They protect the name, design, logo, and slogan of businesses. | They help you to redirect to a specific website that you wish to visit. |
| 2. | Use | They help you differentiate from competitors and cybersquatters offering similar goods and services in the marketplace. | They help the consumers know the IP address of a website so that they can visit the website and brand of their choice to buy products or utilize the services. |
| 3. | Registration | The application for a trademark is to be filed in the patent and trademark office of the specific country. | The domain names are registered via the domain name registry. Anybody can register through this registry on their own. |
| 4. | Rights | The owner of the trademark will only have the right over it. However, this right is transferable. | The domain name holder owns exclusive rights over the domain name. |
| 5. | Accessibility | Anyone can check the trademark of its goods or services through the trademark search. | Domain names can be accessed from anywhere by just searching on the internet. |
| 6. | Information related to the owners | The information about the owners of the trademark is available on the internet and is public. | The information about the owners may or may not be available publicly. |
| 7. | Intellectual Property | Trademarks are intellectual property. | Domain names are not considered intellectual property. |
Importance of Domain Name trademark protection
Domain name trademark protection is important for businesses that want to protect their domain names from infringement. As mentioned earlier, US trademark law does not recognize domain name ownership as ownership of associated intellectual property right.
Once the domain name is registered in the USA as a trademark, it becomes essential for the owner to actively protect and enforce the trademark rights. The internet domain must be monitored if any unauthorized use or infringement has occurred or not. The symbol of the trademark must be used next to the domain name whenever it’s displayed in the public domain. It serves as a notice to others that it has been registered as a trademark and deters potential infringers.
Domain name trademark protection ensures that only the legitimate owner of the domain name can use it. It also prevents competitors from registering a similar domain name to confuse customers or to benefit from the reputation of the legitimate owner. The monitoring services help keep track of instances and incidents of infringement and unauthorized use of domain names. It is crucial to take prompt legal action whenever such an infringement is seen to prevent further misuse by the offender or infringer. Furthermore, domain name trademark protection helps to protect the company’s brand by preventing others from using the domain name in a way that is likely to cause trademark dilution.
Periods in Domain Name registration
There are thousands of domain names on the internet, and many new ones also keep coming up. With the rise in the number of new registrations, it is essential for the already existing trademark owners to protect their domain names as a priority.
Sunrise period
Whenever any new domain name enters the market, they have an initial period in which they have to get their domain name registered so that nobody else can do that before. This is the sunrise period when the new entrant has a chance to register at the very beginning of its journey in the market. If someone does not have a trademark but wants to secure the name, they can file for it as a preventive measure in order to secure the name for a certain time period.
Landrush period
It’s the time when the sunrise period ends and the first come first serve rule prevails. If the domain name is not yet registered, one must do that as soon as possible.
Domain Name hijacking and its preventive measures
As per the IBIS World report, US domain names observe a growth of near about 3% every year. This has led to more intentional and bad targets. The hijack of the domain name causes serious damage to the business’s profit and growth prospects. Domain name hijacking is also known as the theft of domain names done with malicious intentions. The attacker or hijacker in this case takes unauthorised control over the domain name and its administrative functions. The technical information, passwords, etc. are attacked to gain illegal access to third-party resources. The traffic of the website is redirected to malicious and competing websites, leading to a loss of profits and consumer trust. Many times hijackers may steal your data, identity, and confidential information.
There are certain strategies available to prevent this theft from happening and facing the repercussions if such a hijack occurs-
- It is essential for businesses and organizations to choose a reputable domain registrar in the US. The records and previous experiences of such registrar must be proven with strong security measures and an excellent consumer base.
- After taking the above step, it will make you less vulnerable to hijacks or attacks on your domain name. After this, you need to set a two-factor authentication model to access your account with the domain registrar. This adds an extra shield to the password and all other unique codes shared.
- The entity must use strong and unique passwords. However, passwords these days are cracked easily, so one should keep a strong password.
- The contact information with the registrar must be kept updated so that the registrar can reach you easily if any suspicious activity is suspected.
- Keep track of the expiration date of the domain name. The domain names which are about to expire are the most vulnerable to attacks.
- Regular checks must be conducted to prevent attacks on the WHOIS information, DNS records, etc.
Types of Domain Name trademark protection
Uniform Domain Name Dispute Resolution Policy (UDRP)
There are several types of domain name trademark protection available to businesses. The most common type is the Uniform Domain Name Dispute Resolution Policy (UDRP). This is a policy created by the Internet Corporation for Assigned Names and Numbers (ICANN) that allows companies to dispute domain name registrations that they believe infringe on their trademarks. It provides a streamlined and cost-effective method for trademark owners to challenge domain names for infringement. It involves the filing of a complaint with the dispute resolution service provider, which later reviews the case and makes a decision. In Quarterview v. Quarterview Co. Ltd. (eResolution Case Numbers AF-0209a and AF-0209b) the complaint in this case was denied by the panel as it was considered that the use of UDRP to resolve a business dispute is inappropriate. It was made clear in this case that the UDRP is meant to address abusive registration and not disputes between parties with competing rights. It was held similarly in the case of Thump Records, Inc. v. WebPros (NAF Claim No. FA0503000446911).
It can be seen that UDRP is a powerful tool, but it has limited scope for brand and domain name holders. It doesn’t aim at resolving all the domain disputes. In some cases, ADR methods such as court action may be more appropriate. Unlike traditional arbitration proceedings, the UDRP can be appealed via a federal lawsuit. The UDRP is administered by the World Intellectual Property Organization (WIPO). Companies can submit a complaint to WIPO, and WIPO will then decide whether or not the domain name registration should be canceled or transferred to the complainant.
In addition to the UDRP, some countries have their domain name policies. For example, the European Union (EU) has the Alternative Dispute Resolution for Domain Names (ADR). This is a policy that allows companies to dispute domain name registrations that are similar or identical to their trademarks. The EU also has the .eu Dispute Resolution Policy (EDRP) for domain names registered with the .eu top-level domain.
Anticybersquatting Consumer Protection Act (ACPA)
It is a federal law in the US that provides legal solutions for trademark owners whose rights have been infringed and are being used in bad faith as domain names. The lawsuit can be filed in federal court to seek injunctive relief and damages. In Panavision Int’l L.P. v. Toeppen (141 F.3d 1316, 9th Cir. 1998), Toeppen registered the domain name Panavision.com. It was originally the trademark of Panavision. Toeppen falsely used the domain to display photographs of Pana, Illinois and offered to sell it for $13,000. It was seen that Toeppen violated the Act and was liable for cybersquatting.
In Mayflower Transit, L.L.C. v. Prince (314 F. Supp. 2d 362, D.N.J. 2004), the defendant used a domain name that was confusingly similar to the plaintiff’s. The court found that the intent behind such a domain name was to convey and express customer dissatisfaction and was for non-commercial use. In this case, it was seen that there is a necessity to establish ill intent behind the infringement for the lawsuit to come under the purview of ACPA.
The other way is to go with traditional litigation in state or federal courts.
Trademark dilution
In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC (507 F.3d 252, 4th Cir. 2007), the court held that the defendant used the domain name “Chewy Vuitton” for pet products. It was seen that this dilutes the famous brand name of the Louis Vuitton trademark. The defendant, in this case, attempted to hamper the fame of the mark, and the similarity of the mark and used the blurring effect of the brand name.
In Starbucks Corporation v. Wolfe’s Borough Coffee, Inc. (588 F.3d 97, 2d Cir. 2009), the defendant used the domain name “Charbucks” for the coffee products. The court said that this didn’t dilute Starbucks’ trademark. The court noticed that there was a lack of actual dilution of the brand name.
Other famous cases
McDonald’s Corporation v. Druck and Gerner, McDental (1993)
Facts
In this case, a restaurant named “McDental” was operated by Future Enterprises Inc. It used golden arches that were similar to McDonald’s signage. McDonald’s filed a trademark infringement lawsuit against Future Enterprises Inc. It was alleged that the use of golden arches created a likelihood of confusion in the minds of consumers between the “McDonald’s” and “McDental” trademark names.
McDonald’s got to know about the use of the McDental name in 1987. It sent the settlement notice to the McDental but they both failed to reach a common solution. Subsequently, McDonald’s filed a suit in August 1990 and alleged that McDental infringed its trademark rights and is diluting its name and reputation. However, McDental claimed that it started using this name back in 1981 and that McDonald’s had notice of this use and it didn’t say anything back then. They also claimed that there would be no confusion between the two names.
Issues involved in the case
- Whether there are chances that the consumers confuse the services of McDental with those of McDonald’s.
- Whether McDental will dilute the market name and reputation of McDonald’s if it continues to use it.
- Whether the mark ‘Mc’ solely belongs to McDonald’s.
Judgment
The court’s decision was in favor of McDonald’s. The court held that McDental’s use of golden arches resulted in the infringement of McDonald’s trademark. It was found by the court that such use of similar marks and trade dress confuses the customers and may dilute the distinction between the brand names. Mcdonald’s has established their ownership rights over the mark of ‘Mc’ and has spent a lot of expenditure on its advertisement. There is an already established name and brand value of McDonald’s in the marketplace and amongst consumers. The Court said that McDental already had the knowledge of the existence of McDonald’s and still used that name just to gain from its market value and popularity. It was also seen that there was a default in the USPTO proceeding and this did not preclude it from using the defense doctrine of preclusion claims.
Louis Vuitton Malletier S.A. v. Akanoc Solutions, Inc. (2010)
Facts
In this case, Web hosting services for websites were created by Akanoc Solutions to sell counterfeit Louis Vuitton Products. Louis Vuitton filed a lawsuit for the infringement of the trademark and diluting the brand name.
Issues involved in the case
- Whether the hosting website service providers be held liable for copyright and trademark infringement of Louis Vuitton?
- Whether the service providers are directly liable for the violation of the company’s trademarks and copyrights.
Judgment
The court held that the company was liable for contributory trademark infringement and dilution. The court also said that the company had prior knowledge that they were infringing on the rights of Louis Vuitton. The Court directed the district court to give statutory damages to the company for contributory trademark and copyright infringement. Both the companies Akanoc and Chen were held jointly liable for the damages incurred by the LV company. The Ninth Circuit court agreed with the jury’s finding and established that Akanoc was well aware of the infringement. The case was remanded back to the district court, directing it to give the contributory damages.
Tiffany & Co. v. eBay Inc. (2010)
Facts
In this case, eBay was sued by the jewelry company for trademark infringement and contributory trademark infringement. eBay advertised the availability of Tiffany jewelry on its website. When eBay got to know that these products were counterfeit, it stopped the advertisement with immediate effect. It was found that 70% of the Tiffany goods that were purchased on eBay were counterfeit.
Issues involved
- Whether the sale of counterfeit Tiffany merchandise on eBay’s selling platform a violation of trademark rights of Tiffany?
- Whether eBay have knowledge of the unverified sellers selling counterfeit Tiffany merchandise on its platform? And whether it should be held liable for allowing these users to sell counterfeit merchandise.
- Whether the defendant is liable for direct infringement of Plaintiff’s mark
Judgment
The judgment was given in favor of eBay. It was found that eBay was not directly liable for trademark infringement. However, it could have been held liable for contributory trademark infringement if it had known of specific instances of infringement and failed to take appropriate action. The court considered the likelihood of confusion and knowledge of infringement. The lower court didn’t find the platform liable for contributory trademark infringement for the sale of counterfeit products of the brand. The court also noticed that eBay took strict steps after knowing that fake merchandise was being sold on their platform, to remove such users and accounts. eBay took corrective measures to make sure that counterfeit products should not exist on their platform. It was because of these reasons that the Court didn’t find eBay liable for the contributory trademark infringement.
Starbucks Corporation v. Wolfe’s Borough Coffee, Inc. (2009)
Facts
In this case, Starbucks filed a suit against Wolfe’s Borough Coffee for trademark infringement and other claims for unfair competition in the market. Starbucks claimed that the Wolfe’s used the mark ‘Charbucks’ that is similar to their mark ‘Starbucks’. Starbucks claimed that their use of this word is likely to cause confusion in the minds of the consumers and will dilute the well-reputed and demanded name of Starbucks. This was harming the market reputation that Starbucks held and was affecting the publicity of the brand name. However, the district court gave judgment in favor of Wolfe’s Borough Coffee and didn’t hold them liable. The decision was given their favor because of a lack of sufficient grounds proven by Starbucks and their failure to serve sufficient evidence to support their claims
Issues
- Whether Wolfe’s Coffee’s use of the word Charbucks is a violation of trademark rights that Starbucks holds.
- Whether there is a likelihood that the consumers might get confused between the two names.
- Whether the word Charbucks is diluting the brand reputation of Starbucks in the marketplace.
Judgment
The Second Circuit Court of Appeals confirmed the judgment given by the district court but remanded the case for further dealings. The case was remanded back to resolve the issue of the dilution of the trademark under federal law. The Court later added that Starbucks failed to establish sufficient grounds for dilution and the Charbucks marks were not substantially similar to the Starbucks mark. Also, Starbucks failed to prove the chances of confusion.
Viacom International Inc. v. Erik Peterson (2001)
Facts
In this case, Viacom International Inc. is the regulator of various channels and television programs. One of its channels is MTV (Music Television). They have had an online presence since 1994 and their website was launched in 1995. They filed a complaint against Erik Peterson who launched his website in 2000, named www-mtv.com. A demand letter was also sent by the complainant to the respondent. The complainant had requested to transfer the rights over the domain name to them. The respondent didn’t respond to this and was alleged of trademark infringement. It was also alleged that the domain name was used to direct the consumers to a third-party website that contained adult content.
Issue
Whether the respondent is liable for trademark infringement.
Judgment
The panel observed that the respondent didn’t make any contentions and that he accepted that he was at fault. The decision was given in favor of the complainant and they had to prove that the domain name was identical to theirs and that it had been made with bad intentions. The panel found the respondent guilty of using MTV’s brand and reputation to redirect the traffic to a pornographic site.
PETA v. Doughney (2001)
Facts
In this case, Michael Doughney made a website named People Eating Tasty Animals (PETA) and named the domain name peta.org. A case was filed by the PETA (People for the Ethical Treatment of Animals) against them and were alleged for trademark infringement, cybersquatting, etc. They claimed that the use of the domain name peta.org by Doughney was diluting the organization’s name and reputation in the market. They are known for saving and giving life to animals but Doughney’s organisation was diluting this name.
Issues
- Whether Doughney violated the use of trademark and diluted the name of PETA organization.
- Whether the rights of Doughney are protected under the First Amendment or it really did infringe the PETA’s trademark.
Judgment
The defense of parody under the First Amendment Act was rejected by the Court. The Court laid down that Doughney was liable for trademark infringement along with unfair competition practices, dilution of name, and cybersquatting as well. The Court of Appeals affirmed the district court’s decision and the ruling was given in favor of the PETA organisation. The act of Doughney’s caused serious harm to the reputation of the PETA organization and there was a likelihood that the public might confuse both the names and organizations.
Hermes International v. Pan Bing Huang (2011)
Facts
In this case, Hermes International is a French company that deals with the design and sale of luxurious goods. The complainant is the holder of many trademarks for Hermes in multiple countries. However, there were a few marks in dispute; these were registered with separate registrars. These were registered on different dates. These are leading to the occurrence of the error page. The complainant’s brand has gained a worldwide reputation and is sold globally. The complainant is the owner of various marks named Hermes.
Issues
- Whether the domain names in dispute are similar to those of the original marks registered by Hermes.
- Whether the respondents are liable for the infringement or not.
Judgment
The Court in this case held the respondent liable and asked to transfer the rights over the disputed domain names to Hermes International. It was established in this case that the marks were confusingly similar to that of Hermes International. It would harm and affect the brand reputation that Hermes has managed to build worldwide. By mere addition of hyphens or country codes does not differentiate the marks. It still gets confusing for the consumers to identify the Hermes brand name. It was due to all these reasons and that Hermes International has satisfied all the requirements of UDRP that the complainant got the transfer to the disputed domain names.
World Intellectual Property Organization (WIPO) Internet Domain Name Process
The World Intellectual Property Organization (WIPO) administers the UDRP, which is the most commonly used type of domain name trademark protection. The WIPO Internet Domain Name Process is a three-step process that allows companies to challenge domain name registrations that they believe infringe on their trademarks.
Step 1: Filing Complaint
The first step is the filing of a complaint. The complainant, while filing the complaint, provides evidence of their valid trademark rights. The complainant must provide evidence that they have a valid trademark and that the domain name registration is identical or similar to the brand. The complainant must also prove that the domain name was registered in bad faith.
Step 2: Filing response
The second step is the response. The respondent in the disputed case of the domain name has an opportunity to defend and file a response to the complaint. The respondent must provide evidence that they have a legitimate interest in the domain name or that the domain name does not infringe on the complainant’s trademark.
Step 3: Decision
The third step is the decision. WIPO will consider the evidence provided by both parties and make a final decision as to whether or not the domain name registration should be canceled or transferred to the complainant.
In The Coca-Cola Company v. David Jurkiewicz (WIPO Case No. D2016-1876), the complaint was filed by the Coca-Cola Company against the domain name “cocacola.me”. It provided the argument that it was infringing the company’s rights and was registered in bad faith to divert the consumers and profits from the association with the brand.
The complainant needs to prove that the domain name was registered in bad faith to disrupt the complainant’s business. The complainant says that the respondent does not have the legal rights and legitimate interest to keep the domain name and that the use is done in bad faith. It was also seen that the respondent offered to sell the name to the complainant before the dispute.
The main issues that arose were whether the domain name was confusingly identical and whether the respondent held any legal or legitimate rights over the same. The secondary issue was whether the name was registered in bad faith to use the market value and reputation of the Coca-Cola Company.
It was found in the judgment that the names were identical and the respondent failed to show the legitimate right in the name. The registration was done in bad faith to redirect the consumer base to themselves. The court held the respondent liable under the UDRP and the respondent was asked to transfer the name to the complainant.
Challenges of Domain Name Trademark Protection
Although domain name trademark protection can be beneficial, it can also be challenging. The process of registering a domain name can be time-consuming and costly if disputes by opposition or otherwise happen. Furthermore, it can be difficult to prove that a domain name registration is identical or similar to a trademark or that it was registered in bad faith.
In addition, some countries do not recognize domain name trademark protection. For example, in the United Kingdom, domain name trademark protection is not recognized under UK law. Therefore, it is important for companies to research the laws and regulations in the countries in which they operate to determine which type of domain name trademark protection is available.
The example here is partially true. Domain names can be protected as trademarks in the UK. It depends on various factors like the similarity index and the similarity of products and services as well. The trademark owner in the UK has the right to stand against and oppose the infringement of their rights. They can request to cancel the conflicting application. The UK is a member of the Madrid Protocol (1996), which is an international treaty that provides a centralized system for the registration of trademarks in multiple countries. It is essential that the owners must use their trademarks or must establish their intent to use them to apply for registration. Non-utilization of a trademark can make it vulnerable to revocation or cancellation.
The challenges that are faced are as follows-
- Time-consuming and costly procedure- The registration of a domain name can sometimes be a costly affair. It is also a complex and time-consuming process. Thorough research is to be done before filing for domain name registration.
- Disputes- There are high chances of facing opposition from a company or brand holder who believes that your trademark domain name is infringing on theirs. This often leads to legal proceedings.
- Proof of bad faith- It becomes difficult for the holder to prove that there was an element of bad faith present. This requires evidence and both time and resources to demonstrate a strong case of infringement in bad faith.
Best practices for Domain Name trademark protection
There are several best practices that companies can follow in order to ensure that their domain name is protected from potential infringers. To address these problems, the companies can adopt the following measures-
- Conduct thorough research- It is really important and essential for a company to conduct thorough research before registering for the trademark domain name and foresee any potential conflicts that may arise in the future because of similarity or for any other purpose. A database of trademarks shall be researched through and one must consult with a trademark attorney if needed.
- Choose distinctive domain names- Choosing a specific and distinct domain name is important. It can help reduce the risk of infringement or confusion.
- Registration- A domain name can be protected by registering it. It can provide a strong basis for action against infringing parties.
First, companies should register their domain names in order to prevent cybersquatting. Second, companies should keep track of potential infringers by monitoring their domain names and trademarks. Third, companies should use the WIPO Internet Domain Name Process to challenge domain name registrations that they believe infringe on their trademarks. Finally, companies should research the laws and regulations in the countries in which they operate in order to determine which type of domain name trademark protection is available.
Conclusion
The protection of domain names in today’s digital era is crucial. They play a significant role in identification and communication globally. Domain names can be registered as trademarks by following the procedures through ICANN and WIPO. Both domain names and trademarks are closely related terminologies. Not all domain names are eligible to be protected as trademarks. Businesses must understand the relationship and importance of both trademarks and domain names. A strong online presence can be acquired by understanding this.
A person must undergo federal registration. Without this, the rights of the person or entity in trademarks, service marks, and domain names are only limited to common law protection. The common law only governs the immediate geographic area where the trademark is used. If an entity wishes to operate globally on national levels or in more than one state, common law protection is not sufficient. Due to the rise in the conflicts and challenges arising between entities over trademarks and domain names, it is essential to know about your rights over these as a business owner or entity owner. For the best possible solution to combat trademark domain name infringement, harmonization of the trademark laws on a global level is highly desirable.
Frequently Asked Questions (FAQs)
When do Internet Domain Names qualify as trademarks?
A domain name qualifies as a trademark when it conveys the products or services in association with its name via its URL. It must be a source indicator to qualify as a trademark.
What initial actions to take if I find out that someone is using my domain and is profiting from it?
Initially, you need to send a cease and desist list to the person or the company you seem to benefit from your domain name. This document is a form of a letter that informs the company that there is an already existing trademark owner and a warning to stop using or benefiting from the domain trademark. If the company continues to take undue advantage or benefit from your trademark then you can proceed with the legal action, for which you need to consult a legal practitioner/lawyer.
Are domain names protected by copyright?
No, they are never protected by copyright but may be protected by trademark rights only.
What do you mean by Cybersquatting?
It means that when a domain name is registered with ill intentions to gain indirect profit from someone else’s trademark. This is done to make a profit out of the reputation and goodwill of the brand in the market.
Who has the right over the domain name?
Normally, it is the owner of the domain name who has the right over the domain name. It can also be an entity that has registered that trademark. However, the domain name ownership is transferable and can be transferred if the person or entity desires to do so. If the owners do not comply with the conditions of the agreement with the registrar of the domain name, then the ownership can be canceled.
How to find out if my trademark is already registered or not?
To find out if your trademark is already registered or not, go to the USPTO website and locate the TESS database. This database will enable you to look for both existing and pending trademarks. This will help you to reduce the chances of your trademark getting refused due to the already existing trademark.
Is the process taken up by the UDRP Administration confidential?
The process is formal and starts once the WIPO Center publishes on its website the domain name in issue, the date of formal commencement, and the status of the case. It is made available on the website under UDRP Policy, following Paragraph 16 of the UDRP Rules. Any other information is not disclosed by the center.
How long does the UDRP Administrative procedure take?
Normally, the procedure is completed within 60 days of the date when the WIPO Center receives the complaint.
Is it necessary that the complaint should be prepared and drafted by a lawyer?
There are no such requirements for filing a complaint by a lawyer but it is always advisable to seek legal assistance.
Should the complaint be notarized or not?
No, there is no requirement to certify or notarize the complaint.
Can the UDRP Administrative procedure be used against the registrar?
No, the procedure can only be used to resolve disputes between third parties who allege abusive registration of domain names.
References
- https://www.google.com/url?q=https://tmep.uspto.gov/RDMS/TMEP/Oct2012%23/Oct2012/TMEP-1200d1e7919.html&sa=D&source=docs&ust=1688132598551378&usg=AOvVaw3Jga7cG9_FE_zZEaWeljGR
- https://www.romanolaw.com/2020/02/05/can-you-trademark-a-domain-name/
- https://www.upcounsel.com/trademark-domain-name
- https://www.wipo.int/amc/en/center/faq/domains.html
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