Domain Name Trademark Infringement

Domain name trademark infringement occurs when a person or business uses a domain name that is protected by a trademark, thereby infringing upon another’s trademark protection.

Elements

There are three elements that are used to determine if someone has engaged in domain name trademark infringement.

1.If a person or business has prior rights granted in the trademark either through continually using it or having registered it;

2.Commercial use, meaning that the person or business is actually using the domain name for commercial use; and

3.The likelihood of confusion. Generally, there are eight factors looked at when considering if there would be a likelihood of confusion when using something (a domain name) that may have trademark protection.

Factors When Determining Infringement

  • Does the holder of the domain have a trademark on the domain name itself?
  • Is the domain name being used the actual legal name of the domain name holder, i.e., John Smith utilizing johnsmith.com?
  • Has the person using the domain made prior use of it? Or has the holder of that domain never used it until after you began using it?
  • Is the domain holder using the domain in a noncommercial or fair use way?
  • Is the person using the domain name intentionally trying to divert customers from the other site? For example, assuming that John has used a domain name for his business. Now, Andrew, who runs the same kind of business, has come in and begun using the same domain name, or one that is very similar, in order to have John’s customers stop using him for their services and instead use Andrew.
  • Has the holder of the domain offered to sell the domain name to the trademark owner for financial gain? Did the holder have the intent to use the domain name for selling goods or services?
  • Has the domain holder engaged in a pattern of registering and subsequently selling domain names without an actual intent to use them?
  • Did the domain holder provide inaccurate information when he or she registered the domain name?
  • How unique is the trademark?

Categories of Domain Infringement

Cybersquatting. Cybersquatting causes the most concern and is the most often type of domain infringement. There is no definite, single definition of cybersquatting, but it occurs when someone intentionally registers a domain name with the purpose of selling it, then prevents the actual trademark holder from using the name or tries to divert traffic from the trademark holder’s site.

Typosquatting. This type of domain infringement is similar to cybersquatting but occurs when the domain name holder registers a famous trademark.

Competing use. Courts have prohibited such behavior from occurring. But competing claims is a complex field that still gets tangled up in many legal disputes. Since the trademark system is categorized by territory and category, many businesses can actually use the same domain as a trademark without infringing upon another’s trademark. For example, the trademark ‘United’ is used by several entities, including but not limited to United Airlines and United Way. But only one company can register the domain ‘www.united.com.’

Reverse domain name hijacking. This occurs when a trademark holder tries to obtain a domain name from another party who has a legitimate competing claim. In this case, there would be no infringement because, as previously noted, many businesses can utilize the same domain but only one business can have an exclusive right to any single domain name.

Fair Use Doctrine

The fair use doctrine is used in any type of intellectual property case. Moreover, the First Amendment permits someone to use another company’s trademark for the purpose of a parody or commentary. Although this type of speech is protected, you’ll still find legal suits involving the use of a trademark for the purposes of a parody or commentary.

Generally, however, such suits are settled outside of the courts. It is important to remember that courts look at a variety of the aforementioned factors when determining what actually constitutes fair use. But suffice to say, the fair use defense can, in fact, be used in a domain name trademark infringement suit.

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