What is a Trademark Domain Name?

May 8th, 2012

Today, we’re talking about the relationship of a trademark to a domain name. This is a very specialized area of Internet law, Internet attorneys such as the attorneys here at Traverse Legal. We specialize in trademark law. We specialize in domain name law. And those two things go together like bread and butter and here’s why. Under the United States code, there’s an Anti-Cybersquatting and Consumer Protection Act that is embedded within the Lanham Act which is basically an intellectual property statute which protects trademarks in the United States under U.S. law. And the Anti-Cybersquatting and Consumer Protection Act or ACPA gives special status to domain names as trademarks.

So, in the normal trademark world, attorneys who specialize in trademark issues tend to spend a lot of time fighting about whether or not a particular use of a word in a particular context is a trademark use. Or whether or not there’s infringement by some other use of the trademark. In the domain name space, Congress essentially said that we are going to give special treatment to a domain name as a trademark. We are going to treat the domain name as the sign above your door. So, in a brick and mortar world when you’re walking down the street and you go by Dunhams or M.C. Sports or Walmart, there’s the big sign. There’s no question that that store is, in fact, Walmart. What they did with domain names is they said they’re going to treat that domain name as a trademark, as a sign above the door.

 

Welcome to Cybersquatting Law Radio where domain name, cybersquatting, and trademark domain name issues are always the hottest topic of discussion.  Whether you are a trademark owner who believes they are a victim of cybersquatting or a domain owner wrongly accused of trademark infringement, you will find all the tips you need to protect your rights right here.

This is Cybersquatting Law Radio. My name is trademark and domain name attorney, Enrico Schaefer.

Today, we’re talking about the relationship of a trademark to a domain name. This is a very specialized area of Internet law, Internet attorneys such as the attorneys here at Traverse Legal. We specialize in trademark law. We specialize in domain name law. And those two things go together like bread and butter and here’s why. Under the United States code, there’s an Anti-Cybersquatting and Consumer Protection Act that is embedded within the Lanham Act which is basically an intellectual property statute which protects trademarks in the United States under U.S. law. And the Anti-Cybersquatting and Consumer Protection Act or ACPA gives special status to domain names as trademarks.

So, in the normal trademark world, attorneys who specialize in trademark issues tend to spend a lot of time fighting about whether or not a particular use of a word in a particular context is a trademark use. Or whether or not there’s infringement by some other use of the trademark. In the domain name space, Congress essentially said that we are going to give special treatment to a domain name as a trademark. We are going to treat the domain name as the sign above your door. So, in a brick and mortar world when you’re walking down the street and you go by Dunhams or M.C. Sports or Walmart, there’s the big sign. There’s no question that that store is, in fact, Walmart. What they did with domain names is they said they’re going to treat that domain name as a trademark, as a sign above the door.

There are some exceptions to that, but as a general rule if your domain name is an indicator of your business, of the source and origin of your goods or services, then the law will treat that domain name de facto common law or registered as a trademark. So, a domain name trademark is, in fact, a domain name that is your trademark. That is the sign above your door. And the reason that this is important is the ACPA provides a number of special protections to domain names to preclude third party infringement by the registration of third party domain names that are similar to yours. So, if you’ve got a domain name that is TraverseLegal.com and it’s a trademark and it’s either a common law trademark or as in our case, registered with the U.S. Patent and Trademark office and recognized as a registered trademark.

Under a common law or registered trademark scenario that domain name, TraverseLegal.com, is going to also be protected de facto as a trademark. So, if someone registers another domain name that is similar to Traverse Legal, let’s say, that they change the spelling from T-R-A-V-E-R-S-E to just ‘S’ and then Legal and they start doing business as a law firm, then there’s no question that that would be a substantially similar use of a very similar domain name, and that it would infringe the Traverse Legal domain name trademark.

So, what you need to understand if you’re going to register a domain and use it to identify your company, the first thing you need is a trademark availability search from a competent trademark registration attorney to make sure  that you’re not infringing a third party’s pre-existing trademark rights. We have had clients who have spent years building successful online businesses only to get a threat letter from a large company saying your domain name infringes our trademark, and we are demanding that you cease and desist use of that domain name which is controlling your website.

Those companies, even though incredibly successful, have had to shut down because they didn’t do a trademark availability search before registering the domain name and creating this new brand. They did not have the funds to fight the mega corporation who has sent the trademark infringement threat letter. In fact, in those instances they had a big trademark problem because it would be hard to argue that there wasn’t potential for consumer confusion from the two different domain names.

So, do a trademark availability search. If someone registers a domain name which violates your trademark rights which is substantially similar and might likely cause confusion to consumers with your domain name, then, in fact, you need to send a domain name trademark infringement threat letter to that person as early as possible before they get overly invested in the domain.

My name is domain name and trademark attorney, Enrico Schaefer, and we’ll see you next time.

You’ve been listening to Cybersquatting Law Radio.  Whether you are filing or defending a claim of cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) or Anticybersquatting Consumer Protection Act (ACPA), we have a cybersquatting and domain dispute attorney ready to answer your questions.