Trademark Disputes Over Domain Names
A domain name can be a trademark in and of itself, but it can also contain a trademark. You need to be careful that your domain name is not trading on another’s goodwill.
- Using someone else’s trademark in a domain name can create a trademark dispute.
- The possession of the domain name can be resolved through the UDRP.
- Possession and monetary damages can be resolved through a federal lawsuit under the Anti-cybersquatting Consumer Protection Act.
- Neither of these remedies may protect trademarks in social media.
Disputes can arise over domain names, especially if the name includes someone’s trademark.
What does a trademark dispute involving a domain name look like?
If a domain name makes unauthorized use of a company’s trademark (assuming that trademark registration has occurred), for example, if www.coke.com were to be registered by a competitor, say Pepsi, there are substantial legal remedies. The Uniform Domain Name Dispute-Resolution Policy (UDRP) enables the trademark’s owner to bring the matter to an arbitrator for a quick and economical resolution of the dispute. The arbitrator will award the domain name to the trademark owner if that owner can prove three things: 1) The domain name is identical or confusingly similar to the owner’s trademark; 2) the current owner of the domain name has no right to or legitimate interest in the domain name; and 3) the current owner of the domain name has registered and is using it in bad faith.
What is cybersquatting and how does it relate to trademark disputes over domain names?
A trademark owner in the U.S. also can seek relief under the Anticybersquatting Consumer Protection Act (ACPA). This federal law creates liability for any entity that, “with a bad faith intent to profit from the goodwill of another’s trademark,” registers or uses a domain name that is either identical or confusingly similar to a trademark that is distinctive at the time the domain name is registered; or identical, confusingly similar to, or dilutive of a trademark that is famous at the time the domain name is registered.
The law provides that a trademark is distinctive if it is unique or arbitrary (rather than descriptive of the company or its goods/services) or is descriptive but has acquired a secondary meaning. Secondary meaning exists if a significant percentage of consumers view the trademark as associated with the source of goods or services.
Potential damages in a cybersquatting case
If a trademark owner wins its lawsuit under the ACPA, the court can award the trademark owner the disputed domain name plus either obtain an award of actual damages or statutory damages from between $1,000 and $100,000 per domain name. However, neither of these legal remedies may help protect trademarks in the realm of social media.
For a discussion regarding trademark problems specific to social media, click here.
Whether you have a trademark you want to register, you have received a cease and desist or you need to send one, whether you are on either side of a trademark infringement case or you have questions relating to trademarks and social media or domain names, you will want to consult with a trademark attorney who can protect your rights.
Contact an attorney with Veritas Business Law, LLC for a free consultation.