Domain name registration is a simple task by itself. All you have to do is just pick a domain name of your choice, make sure it is available and pay the registration fee to get the registration done. Although this is true in most cases, sometimes the domain name chosen by you can result in a trademark infringement which could ultimately lead to legal battles and expensive settlements.
Domain name trademark infringement can be avoided easily if you are aware of the basic pointers that should be kept in mind before registering domain names. This article aims at providing all the information you need about domain name trademarks, how to get the trademark for a domain name, conflicting domain names, trademark infringement etc.
Domain Name Trademark – What is it?
Domain names like Dell, Samsung, Lenovo or Canon easily qualify for trademark protection as they do not contain common words from daily life. If someone uses a Dell or Canon in their domain name without the approval from the owners of these trademarks, it leads to a trademark infringement.
If a domain name consists of commonly used terms like ClothingLine.com or FoodDelivery.com, then they do not qualify for domain name trademarks as you cannot stop people from using terms like food, delivery, clothing, etc., in their domain name.
How and when do domain names qualify as a trademark?
If your domain name consists of keywords or terms that are commonly used to describe your products or services, then it is unlikely to qualify for trademark protection. On the contrary if you come up with a domain name like konduit.com that is unique by itself, it is more likely to qualify for domain name trademark and you can notify the U.S. Patent and Trademark Office (PTO) of the intent to use the name in commerce as a trademark and apply for trademark protection. Although there is no legal requirement that you carry out a federal registration of your domain name as a trademark to use it for your business, it always good to register the name trademark to avoid unforeseen legal circumstances in the future.
According to a rule by the Ninth Circuit U.S. Court of Appeals, if a domain name has to qualify as a trademark, it should be in use by the businesses for commerce — that is, to sell goods or services — before it can be protected as a trademark. This means that you can get trademark protection for a domain name only if you are actively using it for commercial selling and buying of your products or services. If the name is not actively used and you just own it, it does not qualify for trademark protection.
How can a Domain Name be trademarked?
The process of registering your domain name for trademark protection is simple. However, as mentioned before, it is important to ensure before the registration that name indeed qualifies for trademark protection. The steps to trademark a domain name are listed below:
Do a trademark search
The first step to carry out before registering the domain name is to do a trademark search on the US Patents and Trademarks Office website. When you are sure that the name chosen by you does not clash with an existing trademark, you can search for its availability and register it for your business.
Fill an application for registering the Domain Name as a trademark
Once you register your domain name and use it for your commercial business, you can apply for registering it as a trademark with the US Patents and Trademarks Office. The government charges a nominal fee for filing and processing of applications. It is important to note that the fee charged by the government is applicable even if your application for a trademark gets rejected for conflicting with an already registered and existing trademark. It is always better to take extra care and ensure that the domain name you have chosen does not clash with an already registered trademark.
What is the meaning of Domain Name Trademark Infringement?
Domain Name Trademark Infringement occurs when there is a conflict between the name you have chosen and an already existing domain name trademark. If you try to register a domain name like “canonimages.com” — where a registered trademark “Canon” is a part of your domain name, it is possible that a person visiting your site may assume that your site is either owned by or is affiliated to Canon resulting in deception. Although your intention of using the word Canon may not be to receive more clicks by using a recognized name, such usage results in an infringement of an already registered domain name trademark Canon.com.
Some more information on Domain Name Trademark Infringement
· A domain that consists of the name of an already existing product or service may lead to a trademark infringement.
· A lot of suggestive and memorable trademarks are protected by federal and state law. Make sure your domain name isn’t one of them
· Some descriptive trademarks advertised and promoted extensively are protected under federal and state law.
· If two trademarks could potentially cause confusion to the consumers, it could result in a domain name trademark infringement. In such cases, the first user of the trademark wins.
· If your name was registered after the original trademark, you may have to stop using the trademark and risk losing the domain instead of paying damages to the original user.
How can a domain name trademark disagreement be avoided?
It is always advisable to check the database of the U.S. Patent and Trademark Office at http://www.uspto.gov before registering a domain name so that future conflicts and disputes can be avoided. All trademarks that are registered and pending registration with the US PTO are listed in the database. Apart from searching for the trademarks of your domain, it is also important that you search for all trademarks that are similar to your domain.
After you do your search and find the most relevant domain name, ask yourself these questions:
· Is my website good enough to compete with another site with a similar name that offers similar products or services?
· Is it possible that my website could potentially take business away from another site with a similar name?
· Is the name used by the other website really so well known?
· What if my domain name is looked at as an imitation of another similar domain name?
If your answer to all the above questions is NO, then you can safely register your domain without being worried about trademark infringement.
How to resolve Domain Name Trademark issues?
People often to sell them to the original trademark owner. This results in profits sometimes. However, if you own an original trademark and someone else registers a domain that conflicts with your trademark, you can either take legal action against the person under the Anti-cyber squatting Consumer Protection Act (ACPA), or through the Internet Corporation of Assigned Names and Numbers (ICANN).
According to ACPA, Cyber Squatting means registering, trafficking, or using a domain name with an intention of making a profit by using someone else’s trademark. However, trademark experts think that suing such criminals through ICANN is faster and inexpensive rather than under ACPA.
Registering a domain name and then finding out that it has caused an infringement of the trademark can turn out to be a big waste of time and money. It can sometimes result in long legal battles and arguments. That is why it is important that you research your domain name well and make sure that you are not infringing on anyone’s trademark when you register it.