Domain Name Trademark Infringement
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When a domain name is confusingly similar to an existing trademark, infringement can enter the picture. This creates a headache for all parties involved, whether you own the domain or the trademark.
While domain names and trademarks don’t exist in identical worlds, their overlap is important to understand in order to keep your rights secure.
In this article, we'll cover:
Understanding the Basics
Understanding domain name trademark infringement means first understanding the components that make it up. We’ve broken down the basics.
What is a domain name?
A domain name is a unique user-facing web address that takes you to a specific place on the internet. It includes a TLD (top level domain) such as .com or .org, and an SLD (second level domain) such as “lawoncall” or “youtube.”
What is trademark infringement?
Trademark infringement is a violation that occurs when a trademark is misused. The primary pillar of infringement is the concept of likelihood of confusion: if similar or identical trademarks promote similar or identical goods/services, this can lead to probable consumer confusion about who is providing the products.
For trademarks to coexist peacefully, likelihood of confusion needs to be avoided.
Infringement vs. Cybersquatting
Cybersquatting is a specific form of domain name trademark infringement. It happens when a domain is registered with the bad faith intent to profit from someone else’s trademark. (Note that cybersquatting does not always meet the likelihood of confusion requirement and therefore does not always classify as infringement.)
For example, let’s say someone registers the domain “nwregisteredagent.com.” They set up a site that looks similar to ours, “northwestregisteredagent.com,” but it’s full of click-bait advertisements. This domain would be cybersquatting on ours, as it’s trying to profit off the people who mistype our web address.
Want help trademarking your domain or registering a different kind of trademark? Learn more about Northwest’s Trademark Service.
How to Avoid Domain Name Trademark Infringement
Avoiding domain name trademark infringement is helped by doing research prior to registering a domain. This means conducting a trademark clearance search to find out if any trademarks are confusingly similar to your desired domain.
A clearance search will likely start with digging through U.S. Patent and Trademark Office resources like the Trademark Electronic Search System and Official Gazette, and may also stretch into state trademark databases, business registries, and social media.
If the search turns up a similar or identical match, it’s time to ask some more questions. Dive in below.
Is it infringement if I buy a domain that includes a trademark?
It depends. Owning a trademark does not necessarily give someone the rights to every corresponding or related domain. There are plenty of instances where a trademark’s use within a domain is perfectly acceptable. Even federal trademark registration cannot guarantee exclusive use of a mark online.
To figure out if the domain you want will potentially infringe on someone’s trademark, it can help to answer a few questions. The questions below are not exhaustive, but answering yes to one or more means you may have a legal disadvantage if you register a domain and are later accused of infringement.
- Is the trademark widely recognizable?
Well-known trademarks can carry more weight than lesser known marks. If your domain includes a recognizable trademark, this could present an issue down the line.
- Could the domain collect traffic intended for the trademark owner’s website?
If your domain is similar to a trademark such that you could divert traffic from its intended location, this could count against you in a legal challenge.
- Are the goods/services offered under the trademark and at the domain related?
A cornerstone of trademark infringement disputes is whether the goods and services sold by both parties are related. If you register a domain that’s confusingly similar to a trademark, and you offer confusingly similar products, this could present a problem.
Importantly, if nothing is sold at a similar-to-a-trademark domain, and other attempts to profit off the domain are not present, it will likely be harder for a trademark owner to make their case.
Can I use a domain that is trademarked?
If a domain name is trademarked in its entirety, it will be unavailable for use because of the reality that domain names must be unique. Examples of trademarks that are also complete domain names include “booking.com” and “amazon.com.”
Enforcing Your Rights
In many disputes between trademark owners and domain registrants, it’s the trademark owner pursing legal action. As a trademark owner, enforcing your rights starts out simple enough—by paying attention. Then, when you notice unauthorized use of your mark, it’s time to decide what to do about it.
If a domain is registered that contains your trademark and you believe infringement is involved, one option is to sue, generally after sending a cease and desist letter. The Lanham Act and Anticybersquatting Consumer Protection Act (ACPA) both provide legal frameworks that can potentially be used with domain name trademark infringement cases.
- Administrative proceeding
If you’re a victim of cybersquatting, a typically cheaper and faster option than suing is to file a complaint under the Uniform Domain-Name Dispute Resolution Policy (UDRP). This administrative path stays out of the courtroom, and while you can’t collect damages, you can have a domain’s registration canceled or its ownership transferred.
What’s a real world example of domain name trademark infringement?
One example of a domain name trademark infringement case is Tabari vs. Lexus. In this case, which made it to the Ninth Circuit Court of Appeals, Toyota (Lexus’ parent company) sued auto brokers Farzad and Lisa Tabari. The two had registered domain names that Toyota found problematic: “buy-a-lexus.com” and “buyorleasealexus.com.” Toyota alleged infringement of their “Lexus” trademark.
Ultimately, and perhaps surprisingly, infringement was not found to be present. As the domains suggest, the Tabaris offered services that helped people purchase and lease Lexus vehicles. They did not claim to be directly affiliated with Lexus, and were found to be using “Lexus” in a way protected by nominative fair use.
Had the Tabaris been misleading customers, or claimed sponsorship when there was none, the case would likely have reached a different outcome. Instead, they were allowed to continue offering services through these domains.
Why does this matter?
Domain name trademark infringement is no easy nut to crack. It’s far from a fixed rule that established trademarks must stay out of others’ domains. Ultimately, what’s found at a domain’s website—and the intent of the domain registrant—goes a long way in informing the direction of an infringement case.
Frequently Asked Questions
What is nominative fair use?
The nominative fair use doctrine states that third parties can use trademarks to reference the actual trademark owner or the goods/services that are connected to the trademark.
Can a domain name be protected as a trademark?
Yes. Domain names are not automatically trademarks, but they can be eligible to receive federal trademark registration. For a domain name to receive trademark protection, at minimum, it needs to be an identifier for specific goods/services. It can’t simply be the place where people find you online—the domain itself needs to be a recognizable part of your brand.
Can someone legally take my domain name?
In certain situations, yes. If you register a domain that is protected by someone else’s trademark rights and they take legal action, you could be forced to transfer domain ownership.
What if two companies have the same domain?
Two companies cannot have the exact same domain. While similar domains can exist, there must be some difference between every domain online.
Can I get sued if someone trademarks my domain name?
It depends. If a trademark was in existence before your domain was, and your domain infringes or cybersquats on the trademark, you could potentially get sued. But if your domain existed first and the trademark came along later, the trademark owner would likely have no grounds to sue.