Domain Name and Trademark Infringement

Avoiding domain name and trademark infringement is one of the main purposes of trademark law. While other forms of intellectual property reward an owner by way of property rights and incentivize a person to register a patent, trademark law simply wants to keep a functioning market and avoid confusion or deception.

What is a Domain Name and Why is it Important?

With the rise of the internet and online presence that is required in today’s market, businesses have come to understand the importance of having an online identity. Obtaining a domain name that is the same or similar to your business’s name is critical in today’s world. Without a domain name, a person would not know where or what to search for to find your company online.

Domain names are divided into levels of hierarchy. Top-level hierarchies include the letters after the final dot (“.”) in the domain name. For example, “.com” indicates that the domain name is owned by a commercial entity. This is the most common domain name. Other top-level hierarchies include “.gov,” “.org,” and “.edu.”

In addition to these top-level hierarchies, every country is assigned its own unique domain name. For instance, Canada uses “.CA” and Ireland uses “.IE.”

A majority of conflicts arise over second-level domain names. These are the names that take up the majority of the internet address. For example, “apple” is the second-level domain name in www.apple.com. No two companies can have the same second-level domain name. To register a second-level domain name, a company must file a request with their country’s respective organization that assigns domain names for that particular top-level domain. In the United States, this entity would be the U.S. Domain Registry.

Choosing a Domain Name

Choosing a domain name should be relatively straightforward. It should be concise, catchy, easily construed, and should somehow suggest the nature of the business. Once you have come up with a domain name, it is very important that you or your attorney run a comprehensive search of current domain names and trademarks to ensure that a competitor does not already own a similar name or mark. This will save you from investing a lot of money and time into advertising a domain name or trademark that is already registered and can avoid a possible infringement lawsuit.

The U.S. Patent and Trademark Office (USPTO) has a database of all registered trademarks and pending registrations available to help determine if there is a similar name out there. It is also recommended that you search a more general business name database.

Options for Dealing With a Domain Name Infringement

If a person comes across someone else using their domain name illegally, there are a few options open to the original owner.

  • The owner could do nothing. While this is the cheapest and easiest option, the owner runs the risk that the fraudulent domain name will cause confusion with the owner’s company.
  • Submit a “cease and desist” letter to the infringer.
  • Create a business relationship with the third party and license out your domain name.
  • Hire a lawyer.

What Is a Trademark?

A trademark is a phrase, logo, design, term, or any combination thereof that is used to identify or distinguish a unique product from a competitor’s product. A service mark is essentially the same thing as a trademark, except that instead of identifying a product, it identifies the source of the product.

A trademark or service mark will be considered in conflict if by using one, it confuses that product with the other similar trademarked products or sources. This confusion could lead a consumer into buying one product, when they really meant to buy the other. The owner who used the trademark or service mark first is considered the original owner. Anyone who subsequently uses the trademark or service mark will be considered infringing on the owner’s rights and will have to cease using it and pay money damages to compensate the owner. However, the domain name or trademark must be legally protected; otherwise, there are no valid property rights over that product.

A trademark must be distinctive as opposed to a generic word or phrase. Otherwise, it will not qualify for protection. And while registering a trademark with the U.S. Patent and Trademark Office is not required, it is advised because it strengthens a person’s claim to property rights if a right to use a trademark is ever disputed in the future.

If you need help with domain or TM infringement, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law, and average 14 years of legal experience, including work with, or on behalf of companies like Google, Stripe, and Twilio.