Is Your Domain Name A Trademark Infringement?
I recently received an email from a concerned, fellow Internet
business owner, asking for my opinion on an issue that could
literally destroy his Internet business and the business of
several other domains involved.
He had received legal notice from a prominent company, stating
that he needed to relinquish his use and rights to his web site
domain name because it contained three letters that infringed
upon their trademark and their domain name. This same company
also contacted several other Internet business owners and made
similar demands.
Should a company that registers a specific trademark have the
ability to destroy numerous businesses that legitimately
registered domain names? Should a company that registers a
trademark have the responsibility of ensuring that a domain name
registration agency doesn't issue domain names that may be a
trademark infringement? Or should an Internet business have the
responsibility of making sure a potential name doesn't Infringe
upon a registered trademark? Where does the responsibility lie?
Ultimately, the responsibility lies with the domain name
registrant, as the trademark laws that apply in the hard copy
world also apply on the Internet.
Any company that registers a trademark has the right to protect
their trademark and has the right to notify you that your domain
name is infringing upon their trademark. Why? If your domain
name has the potential of confusing the public into thinking the
trademark holder is somehow affiliated with your web site, they
may bring infringement claims against you. The courts would have
to make the decision based upon the trademark laws and if your
domain name, in fact, has the potential of confusing the public.
Domain name registrants can protect themselves as well. If you
have a registered domain name that doesn't infringe upon any
trademarks, you too may be able to register a trademark.
Registering a domain name as a trademark isn't easy, but it can
be done. Although you can't register the http://www.or the .com,
if the use of your name fits the laws criteria, it can be
registered. You should consult with an attorney familiar with
the Internet, trademarks and the laws prior to registering your
domain name as a trademark. For a complete explanation, visit:
http://www.uspto.gov/web/offices ac/notices/guide299.htm
As stated by the United States Patent and Trademark Office,
http://www.uspto.gov/ "A mark composed of a domain name is
registerable as a trademark or service mark only if it functions
as a source identifier. The mark as depicted on the specimens
must be presented in a manner that will be perceived by
potential purchasers as indicating source and not as merely an
informational indication of the domain name address used to
access a web site." In other words, the use of a domain name
must not be used simply as an address to direct customers to
your web site, but must be used to identify the products or
services of the business claiming the trademark, which provides
products or services via the Internet.
If you're in the market for a domain name, you may want to
consider searching the Trademark Electronic Search System,
http:/
ess.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk prior
to registering a domain name. By researching the trademark
regulations and knowing your rights, whether you hold a
trademark or a domain name, you may be able to avoid the
possibility of litigation.