Is Your Domain Name a Trademark Infringement?

Written by: Craig Edmonds | November 26, 2009

The Domain Name System (DNS) is a website’s primary identification scheme.

Other identification schemes include the IP address and the autonomous system number. All these identification schemes can be viewed by using the WHOIS protocol, which accesses a website’s WHOIS record.

The Domain Name

Users remember a website because of its domain name. Unlike the IP address and the autonomous system number, both of which are made up of a series of numbers, the domain name can be made up of both numbers and letters. This leads to interesting combinations such as Ninetynine99.com, norestfortheweary.com, and buydomainnamesfor70.com. Domain names are usually sold by domain sellers on the world wide web such as DomainName.com (http://www.domainname.com), Domain Name International (http://www.domainint.com) and Yahoo! Domains (http://smallbusiness.yahoo.com/domains).

Aside from the domain name, sometimes these domain sellers also provide buyers with additional features such as 24-hour phone and online support, e-mails accounts, and data transfer and storage options. Domain names come in different prices depending on the domain name seller and the predicted popularity value of the domain name itself.

Buyers of domain names usually choose the catchiest names for sale, unaware that buying just about any domain name comes with a serious legal risk: trademark infringement.

Trademark Infringement via the Domain Name

Trademark infringement occurs when a domain name contains letters, words, or symbols of another company’s registered trademark.

A company trademark, like the domain name, is a primary identification scheme.

A domain name which bears a similarity to a company’s trademark may give users the impression that the domain name owner is connected to the company.

This misrepresentation of the company’s trademark, whether intentional or unintentional, entitles the company to send a “cease and desist” letter against the domain name owner, requesting him to relinquish his domain name address because it infringes on the company trademark.

If the domain name owner refuses to comply, the company may pursue the case via WIPO (World Intellectual Property Organisation). This serious charge is automatically escalated to a legal body within WIPO. The outcome of this scenario is all too predictable: the domain name owner loses the case, because the aggrieved company is supported by solid legal provisions regarding trademark infringement. The domain is usually transferred to the complainent and the domain owner loses the domain.

Avoiding Trademark Infringement

Being charged with trademark infringement can easily render any domain name owner, from online companies to casual Internet users, of being blacklisted on the internet because all WIPO decisions are made public.

So, the long and short of it is, if you think a domain name is possibly infringing a trademark, then usually it is.

To avoid this legal nightmare, if you plan to purchase a domain name, try visiting the United States Patent and Trademark Office website (http://www.uspto.gov) to search for trademarks similar to the planned domain name you wish to register.

If the search yields results similar to their planned domain name, you should settle for another domain name rather than risk being charged with trademark infringement.

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