Domain Name Trademark Issues
The number of online retailers entering the market has increased exponentially. This is in large part because our access to the Internet has become faster and more easily obtained. It is not just about accessing your neighborhood customers anymore. Rather it is about being able to access as many people as possible, and as quickly as possible. As a result the name you use and the marketing of that name as an online company is probably one of the most important assets you need to protect. However, that name is not necessarily your trademark. If you want it to be there are further steps you need to take.
Domain Names Do NOT Equal Trademark Registration
Many have the mistaken belief they have the right to use a particular domain name if they have successfully registered it with a company like GoDaddy.com. The belief is by registering a domain name a trademark is no longer necessary to reserve rights to use the domain name. This is simply not true. When you register a domain name, it is true you are purchasing certain rights to use the domain name. However, merely registering a domain name does not necessarily give you rights to use the domain name. This is because any rights you acquired by registering the domain name are still limited by and subject to federal trademark laws.
The reason to acquire a federally registered trademark over your company’s name is so you can ensure the exclusive right to the name in relation to the goods and services you offer. The problem that arises is when you decide to purchase a particular domain name with the intention of using it at some later time in the future. The issue is that by not using the domain name now, you would be unable to establish common law trademark rights. Where this becomes problematic is when a competitor decides it would like to use that name (or a confusingly similar name) for the same type of goods or services, and then files for a federal trademark. If successful, the result is your competitor would have a legal right to take the domain name away from you. In other words, you would need to find a new domain name.
This situation could also give rise to a potential trademark infringement lawsuit. For instance, say you decide to launch your website using the domain name you have acquired and unbeknownst to you your competitor already owns rights to the name despite not having acquired the domain name. Although you many not have intended to infringe upon your competitor’s name, by using the mark in commerce this would open you up to being liable for trademark infringement.
- Domain names can represent your trademark or they can represent an address (with no trademark characteristics), it depends on your use
Should You File for Your Domain Name Trademark Registration?
There are a number of important situations where acquiring a federal trademark over your domain name is recommended. Here are a few specific instances in which it would be advisable to look at acquiring a federal trademark over your domain name.
Intent to Use the Domain as a Trademark
One situation where you would obtain a domain name trademark registration is where you purchase a domain name and want to use the domain name as your trademark (such as, Overstock.com) but are not yet ready to launch your website. One of the many benefits of trademark registration in the U.S. is it allows you to reserve rights to a particular name by filing an intent to use application. This will allow you to reserve your right over the exclusive use of the domain name despite not having yet used it in commerce. This type of application will give you rights over the name even in situations where others use the mark before you.
You Use the Full Domain as Your Name
You want to use the full domain name as your brand name. An example of this is Overstock.com, eHarmony.com, or hotels.com. When promoting their brand, these businesses always emphasize the .com portion of their name. Therefore, depending on your marketing strategy you may want to consider filing a domain name trademark registration for your domain name. This is especially the case where you use your domain name to identify and distinguish you from your competitors.
- If you utilize the .com portion or the website suffix in your business name, then odds are you’ll want to acquire a trademark for that name.
Domain Name Dispute
You can resolve domain name disputes through procedures at ICANN (Internet Corporation for Assigned Names and Numbers). This policy is known as UDRP (Uniform Domain Name Dispute Resolution Policy). In order to acquire the name there will need to be some bad faith on behalf of the domain name owner. For example, just because someone has the domain name doesn’t mean they have to give it to you because you own the trademark; they could own the trademark too. A good example is Dove chocolate and Dove soap. Who has the right to dove.com, they both do, so first come first serve.