I was recently talking to Dan Pepper of the Pepper Law Group about trademark and copyright, and we drifted to a topic under popular discussion recently: When is the use of someone else’s trademark in a domain name considered infringement? Domain names often contain terms which are trademarked by another party, but that doesn’t mean the URL owner is necessarily infringing on the trademark owner; there are both legitimate and non-legitimate situations, and some are permissible. I’ve noticed more articles on this subject on the ‘net, and as branding and social marketing concerns increase in this time of intense competition, we will likely see more.
Dan explained to me that for the use of a specific domain name to constitute cybersquatting, the owner of the trademark generally must prove that they do in fact enjoy legitimate trademark rights in the name, that the infringing domain names allegedly appear “identical or confusingly similar” to the trademarked name, that the URL owner has no legitimate right to use the name, and that the URL owner registered and used that URL in bad faith. I told him that sounded to me like a lot to prove.
He expanded his explanation further, telling me that there are subtle differences between cases where trademarks of commercial enterprises are concerned as opposed to other types of trademarks. Apparently, commercial enterprises very often have names that are similar to each other and, as a consequence, multiple parties may well present genuine claims to the name and, in fact, there may be as many different uses of the name as there are parties claiming it. He compared this complicated scenario to the instance of the use of a celebrity name or trademark, where it is more obviously the unique celebrity brand, and usually much more difficult for the URL owner to prove that they have the right to use the celebrity’s trademark – unless it is actually their own name.
Dan said this enables commercial enterprises to access a variety of defenses not available to defendants embroiled in a celebrity trademark and domain name action. For example, he proposed that commercial defendants might argue they operate a business that has a different nature and purpose from that of the trademark holder, and this is especially effective if it does not compete with the business of the trademark holder. If their services are complementary to the trademark holder’s business, this may actually help as well.
Dan said if you choose a domain name in conflict with any of the millions of commercial names already in existence online, you will always run the risk of losing it. We all expend money and sweat equity in building our online brands and marketing our websites – having to relinquish your URL after establishing your online presence will likely doom your business and make it impossible to recover any earned momentum – I think the message here is don’t take any shortcuts and choose carefully…
Rules for understanding whether a legal conflict exists come from trademark law. Dan says every attorney will caution you to keep these basic considerations in mind:
- Names that identify the source of products or services in the marketplace are trademarks.
- Trademarks that are clever, memorable or suggestive are protected under federal and state law.
- Trademarks that are descriptive and have achieved distinction through sales and advertising can be protected under federal and state law.
- One trademark legally conflicts with another when the use of both trademarks is likely to confuse customers about the products or services, or their source.
- In the case of a legal conflict with a later user, the first commercial user of a trademark owns it.
- If a legal conflict is found to exist, the later user will likely have to cease using the mark – and may even have to pay the first trademark owner damages.
Dan told me if you can answer ‘no’ to every one of these questions you can feel reasonably confident to proceed to use your domain name without fear of creating a legal conflict. If you answer yes to any of them, you will always be at risk of a legal challenge down the road. If you are uncertain, you should run your concerns by a trademark attorney for an opinion. He said you can anticipate that the attorney will be more conservative than is actually necessary [!], but you still may benefit from having a trained eye go over your choices and reasoning, and you will surely gain a better understanding of what your options and expectations are.
Daniel A. Pepper, Esq. is the managing member of the New Jersey-based law firm Pepper Law Group, LLC, and has been practicing law since 1994. His practice areas include First Amendment rights, obscenity law, Internet Law, software and technology licensing, electronic commerce, and intellectual property protection. Mr. Pepper regularly advises his clients on cross-border technology transfers, affiliate, distribution, and marketing, technology deployment, e-commerce and Internet strategies, including compliance with the Digital Millennium Copyright Act, and data security and privacy management. The Pepper Law Group website can be found at: www.informationlaw.com, and the firm can be reached at 908.698.0330.
About the Author: Joe Devlin III
Joe Devlin has been active in Internet Marketing, branding and eCommerce education since helping to establish early online distance learning efforts at Florida Atlantic University beginning in 1996 — while earning a Master’s degree in Communication Disorders. With a special emphasis on New Launches and Webmaster Affiliate Marketing articles and tutorials covering every aspect of website growth and success, Joe also enjoys specific expertise in successful marketing and sale of alternative non-card payment methods and optimization of local international conversion techniques to maximize Client Merchant revenues on a Global basis.
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