A domain trademark dispute is a legal issue that arises between two businesses that are trying to use the same domain name. Domain names and trademarks are protected intellectual property and can, therefore, be enforced through legal action. Domain names can face two different types of disputes:

  1. Cybersquatting.
  2. Ownership (regarding security interests).

What Is Cybersquatting?

Cybersquatting is a type of trademark law that focuses on the use of a domain name that infringes on a trademark. Using another person or entity's owned domain name is not allowed on its own, but cybersquatting takes the issue to a further degree by using a protected trademark in a domain name. This means that the offended party can sue on the grounds of trademark infringement as well as under the Anti-Cybersquatting Consumer Protection Act.

If the suit is successful, the offended party can collect damages that were proved in the case as well as transfer the ownership of the infringing domain name to the trademark holder's possession.

If you're pursing legal action against another party for use of a domain name, but you're only interested in gaining ownership of the domain, you can opt for a proceeding under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). This is an arbitration case rather than a full-blown trial. This type of proceeding is internationally recognized and has been in use for a long time.

A new policy called Uniform Rapid Suspension (URS) comes online soon and is meant to offer a cheap and fast method for handling infringement disputes. This policy will work best for disputes have a clear example of infringement.

All cybersquatting disputes face the same difficulty: They all must prove the bad faith intentions of the accused cybersquatter. Trademark infringement tends to be easier to prove. Cases under UDRP and URS require that the trademark in question be registered. This is a good reminder to make sure that you register your trademarks.

Disputes that call into question the domain name's rightful owner usually look at two different aspects of ownership. First, there's trademark ownership, then domain-name ownership and registration. Registered domain names pose a new issue to courts regarding intellectual property ownership because they are relatively new to the scene.

What Are Trademarks?

Trademarks are a type of intellectual property that can be protected by law when they are registered. They are usually in the form of phrases, words, logos, or other types of creative expression. Domain names can sometimes infringe on trademarks because the domain name registrar will simply award the ownership of a domain name to the first person who requests it without double checking any trademarks.

This means that a person or business entity can accidentally infringe on a protected trademark or trade name by registering their domain name without checking the USPTO (United States Patent and Trademark Office) database. Sometimes trademarks can actually be the same words or similar words as long as the businesses or goods they represent are very different to avoid confusion. For instance, an airline company and a water faucet company both have the name "Delta" registered as their trademark. Problems are more likely to arise when two similar industries try to use the same trademark.

Can Two Parties Register the Same Domain Name?

The short answer is: No, two parties cannot register the same domain name. In some cases, competitors will register domain names simply to hold them and sell them for a profit through a bidding war. This practice is called cybersquatting, and the third parties who do this are called pirates. Even if two businesses have been legitimately using their trademarks for years both want to register a domain name for their company, they still cannot both use the same domain name.

In the case of the trademark, Delta, only one of the companies using the same name can claim the domain name. This means that only one of the companies can own the delta.com while the other will need to buy a .org name or change the name somewhat to get a .com name. The issue of domain names brings about many potential problems because frequently the domain name isn't using an exact trademark, but an abbreviated or slightly adjusted version of the protected name, word, or phrase.

If you need help with a domain trademark dispute, 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.