Domain Name Trademark Infringement

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Domain Name Trademark Infringement

Domain name trademark infringement is similar to any other type of trademark infringement.  The only difference is that the infringement is primarily related to a domain name.

What is Domain Name Trademark Infringement?

When choosing a trademark for a business that primarily operates online, a decision is often made between fling the trademark with or without the “.com” at the end.  It is also possible to include “.com” in a trademark application filed with the U.S. Patent and Trademark Office.   Our general advice is to register what you use and use what you register.  So if you primarily use the .com with your trademark, that is how it should be filed with the trademark office. When a domain name is used by anther party without authorization, then domain name trademark infringement occurs.

For a domain name to be trademarkable and thus protected from infringement, products or services must be sold using the domain name as the trademark. This is why Amazon owns trademarks for Amazon and Amazon.com.

If a trademark utilizing a domain name is in use, then anyone who improperly uses the website address is involved in domain name trademark infringement. While common law trademark rights exist even without registration, it is still highly recommended for domain owners to seek federal trademark registration which conveys national rights.

Cybersquatting

When you file a trademark application for a domain name with the USPTO, any unapproved use constitutes trademark infringement. This form of trademark violation, however, is different than cybersquatting.  Cybersquatters purchase, transfer, use and traffic in domain names that are similar to other domains that are already in use. These acts are done in bad faith to profit from another brand’s established reputation.

There are many ways that a person could profit from cybersquatting. Domain names are sometimes purchased, for instance, simply to be sold to brand owners at an inflated price. Other instances involve domain registrants who try to trick consumers into thinking they are buying from a different brand. There are even occasions when a domain is registered simply to hurt a direct competitor.

The following are all common examples of cybersquatting:

  • Registering a domain featuring a misspelling of a trademarked brand (e.g. DisneeWorld.com).
  • Utilizing different top-level domains to confuse consumers (e.g. DisneyWorld.org or .net).
  • Purchasing a domain name whose owner forgot to renew then attempting to resell it.
  • Registering a domain featuring a startup’s trademark with the intent to later sell it to them.

While these acts constitute a type of trademark infringement, claims of cybersquatting do not always have the evidentiary burden of proving that a likelihood of confusion exists. If a brand owner can successfully show that a domain was purchased in bad faith and is interfering with their right of exclusive use, it is likely that courts will grant them ownership of the domain.

Around 13.5 million domain names are registered every year. During that same period, the World Intellectual Property Organization (WIPO) handles about 3,500 cases involving alleged cybersquatters. While this may seem like a comparatively miniscule amount, the fact is that instances of cybersquatting are increasing every year.

When alleging the act of cybersquatting as part of a UDRP complaint, claimants typically need to prove three things:

  1. The domain in question is identical to or confusingly similar to their trademark or service mark.
  2. The registrant has no legitimate rights or interests in the use of the domain name.
  3. The domain name was registered in bad faith.

These elements are meant to protect both brand owners and free speech while abiding by trademark law. If there is no likelihood of confusion due to separate industries, for instance, a finding of cybersquatting is unlikely. It is also probable that cases involving “gripe sites” or other good faith use will be dismissed without a change in ownership.

While cybersquatting is a separate form of domain name trademark infringement, it is handled similarly to other violations. Rightful owners can seek injunctions, compensation and transferal of ownership in court. They also have options outside of the traditional courtroom setting. Most of these issues can be avoided, however, by simply protecting your rights from the start.

Registering a Domain Name

The best way to prevent many types of domain name trademark infringement is to proactively register all related domain names. This will leave cybersquatters with few options for registration, and by covering all your bases, you will show potential infringers that your brand is serious about protecting its intellectual property rights.

The following measures will minimize your chance of experiencing problems:

Perform a Trademark Search

A trademark search will tell you if anyone has rights over the name you intend to use in your domain. A preexisting registration does not necessarily mean you cannot use a similar domain. This typically only becomes an issue if you’re within similar industries as shown in the different trademark classes. This step is not mandatory, but it will let you know if potential domain disputes may arise.

Search the Domain Database

Performing a search on the WhoIs database is an easy way to see if your domain name is even available. You will also be able to check various top-level domains for similar web addresses. You may discover a company already exists with your brand name, but you could also stumble upon a cybersquatter who is hoping you will contact them to purchase their ill-gotten domain.

Use a Domain Registrar

Once you have confirmed that your domain name is available and is unlikely to conflict with other trademarks, choose a registrar to claim your corner of the internet. There are a variety of options for doing this, but the following some of the most popular:

  • GoDaddy
  • Google Domains
  • Network Solutions

Each of these have their own benefits, but they are all capable of registering top-level domains. It is advisable to purchase each related TLD (e.g. .org, .net, .com) in order to prevent possible cybersquatting once your brand is more established.

Trademark Registration

In order to reduce the likelihood of any type of domain name trademark infringement, you should  register your trademark with the USPTO.

Domain Name Trademark Infringement Letter

While there are several options for handing domain infringement, a trademark cease and desist letter is typically the best initial response. This notice can later serve as proof that infringing actions were willful and possibly malicious. This can result in higher awards if the case goes to court.

In cases where others are wrongfully using your trademarked domain name, you can simply demand that these actions cease. If you are dealing with a cybersquatter, though, it’s also advisable to demand that the domain name be turned over.

A domain trademark infringement letter shows third parties that your brand is serious about protecting its intellectual property rights. The recipient may simply cease their behavior with no response, respond to your letter, or ignore it and continue infringing. Their chosen course of action will dictate your next move.  We suggest that these letters come from a trademark lawyer that litigates.  We find that infringers tend to quickly respond to our letters because we are aggressive intellectual property litigators.

If infringement does not end or an agreement is not reached, there are two main recourses available to trademark owners: UDRP complaints and ACPA lawsuits.

UDRP Complaint

A UDRP complaint filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) was created by the Internet Corporation for Assigned Names and Numbers (ICANN). Its purpose is to resolve disputes involving domain names, and this makes it a popular course of action when dealing with cybersquatters. If you are successful in your case, the domain will be transferred to your ownership.

WIPO and a few other international organizations handle these complaints. Complainants are successful in an overwhelming majority of the cases often because the infringer doesn’t even respond. A fee is required when submitting a request for proceedings, and this must be paid by the complainant. One downfall of the UDRP process is that financial compensation is not possible. If you win your case, you are only entitled to ownership of the domain.

When a complainant is successful, the registrar of a domain name will be instructed to transfer ownership after 10 days. The alleged cybersquatter can file a lawsuit within this timeframe to prevent the transfer. If the alleged violations are occurring, though, this will merely open the infringer up to financial penalties.

Lawsuit Under ACPA

If a third party is using your trademarked domain name without permission, you can file trademark litigation under the Lanham Act as you would in other cases of infringement. If your dispute involves a cybersquatter, however, it is the Anticybersquatting Consumer Protection Act (ACPA) that creates a cause of action.

In addition to the three elements considered by international organizations (i.e. confusingly similar, no legitimate rights and bad faith), it must also be proven that the cybersquatter intended to profit from their actions. This could involve anything from selling a domain at an inflated price to interfering with a competitor’s ability to market themselves online.

Successful complainants under the ACPA could receive between $1,000 and $100,000 per domain name in question. This is in addition to any injunctions or orders for transfer of ownership. Trademark litigation can take longer and cost more than filing a UDRP complaint, but it is also the only way to receive financial compensation for suffered damages.

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For any questions about domain name trademark infringement, please contact today.

 

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