What Happens If You Register A Domain Name For An Already Established Trademark Company

• Posted on: Feb three 2022

By: David Ludwig [2/4/22]

Trademark rights and domain proper noun ownership overlap in many ways, but they are not the aforementioned. Domain name ownership does non necessarily establish trademark rights, and trademark ownership does not necessarily give you the right to own the corresponding domain name.

I am often approached by clients who take received a finish and desist letter related to their website or domain name who were surprised to learn that someone can still accuse them of trademark infringement despite the fact that they own the domain name containing the trademark at issue. Similarly, I take also been approached past clients who have recently received a trademark registration who believe that the trademark registration allows them to seek turnover of the corresponding domain name. At that place is quite a bit of misunderstanding regarding the coaction between trademark rights and domain name ownership.

What is a trademark?

In order to fully sympathise how trademark rights and domain name ownership bear on i another and differ, it helps to beginning with a basic understanding of both. In general terms, a trademark (as well sometimes referred to equally a "service mark") is any name, logo/design, or slogan used to promote a business concern. A business does not need to register the trademark to have rights (but registration does offer more than robust rights). Rather, trademark rights ascend whenever a marking is "used in commerce" -whenever the name, logo, or slogan is used in connexion with the products or services offered by the visitor in such a way equally to create an association in the minds of consumers connecting the mark with the visitor. Every fourth dimension a can of Coca-Cola® is placed on a grocer'south shelves, or every fourth dimension a box of french fries displaying the McDonald's® "golden arches" logo is handed to a hungry kid, those famous trademarks are existence "used in commerce." Accordingly, a trademark is something that makes a connection in the minds of consumers between a particular product or service and the company that provides that production or service.

One time trademark rights are established, they are not absolute. For case, McDonald's® would take difficulty using its trademark rights to foreclose another company from using the aforementioned name for an information applied science (IT) consulting business concern (although for very famous marks, the trademark dilution doctrine might be used to forbid such uses). This is considering trademark rights are express not only by the mark merely also by the blazon of products or services that the mark is used in connection with. This is why there can be a prominent national airline and also an unrelated company selling plumbing fixtures that both do business under the name Delta.®

What is a domain name?

A domain name, by contrast, is a string of characters that serves as an identification string for internet addressing purposes. When a domain proper noun is typed into a web browser, in that location are rules and procedures of the Domain Name Organisation (DNS) that tell the browser the location of the server where the corresponding website files are hosted. Accordingly, a domain name is something that makes a connection for internet users between a specific string of characters and the location of the owner'south website content files.

When does a domain proper name affect trademark rights?

The curt answer is "never"—a domain name, by itself, cannot confer whatsoever trademark rights on the domain proper name owner. This is because a domain name, by itself, does non create a consumer association between a company and its products. However, a business'south website that advertises or sells the company's products or services can create this type of consumer association. In this sense, even so, the content of the website itself creates trademark rights, not necessarily the domain name.

When does a trademark affect domain proper noun rights?

In full general, domain names are a "kickoff come up, first served" article. The first person to purchase a given domain proper name retains the rights to the name until information technology is sold or the registration term expires. This is generally the case even when the domain proper name is a trademark. If I happened to annals starbucks.com before the coffee company, the java visitor may take to mail its website at a dissimilar domain proper noun address until my registration expires.

However, there are certain exceptions to this rule. "Cybersquatting" is when a person registers a domain proper name containing a trademark without a legitimate purpose and simply to foreclose the trademark owner from having it (or re-sell it to the trademark owner at a steep profit).

In cases of cybersquatting, a trademark owner can seek the return of a domain name that contains a trademark. There are a couple of different procedures to attain this. Still, in general, a trademark possessor must show that the domain name was registered in bad religion and with the intent to profit from the trademark at result and that the domain name is confusingly like to the trademark at outcome.

In determining bad faith, a courtroom or other tribunal volition consider the strength of the trademark owner's rights whether

• the domain name possessor has any legitimate claim to the name,
• the domain name has been used for legitimate business organisation purposes,
• the domain name owner has displayed an intent to divert customers abroad from the trademark owner's site,
• the domain name owner has offered to sell the name for a profit, or
• the domain name owner has registered multiple domain names that are like to registered trademarks, amongst other things

A trademark owner can recover an improperly registered domain name in these situations.

Although there are significant areas of overlap between trademark utilise and domain names, the two sets of rights differ both in how they are acquired and how they impact one another. A business with an online presence should pay careful attention to both sets of rights when edifice a brand and investing in online advertising.

To learn more than nigh Dunlap Bennett & Ludwig and how nosotros assist you, contact united states of america past calling 800-747-9354 or emailing clientservices@dbllawyers.com.

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Tagged with: domain infringement, Domain Name, Trademark, trademark infringement, trademarks

Posted in: Cyberspace, Trademark

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David'due south exercise focuses on civil litigation in the areas of patent, trademark, copyright, internet / domain names, commercial transactions, government contracts, customs associations, and bankruptcy law / creditors' rights, as well as trademark and copyright prosecution, and corporate and modest business concern law. He is co-chair of the house'southward litigation group, supervising several lawyers, and he has served every bit an attorney for local and national clients in federal and state court litigation and mediation matters, besides as in bankruptcy proceedings, TTAB disputes (trademark Detect of Opposition and trademark Petition to Abolish proceedings), domain name disputes (ACPA, UDRP, and URS proceedings), government contract bid protests and Tucker Deed litigation, and numerous other forums and proceedings.

To larn how Mr. Ludwig can help you with your legal needs, click here.

Source: https://www.dbllawyers.com/trademark-use-and-domain-names/

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