You register the perfect domain name, spend a lot of time and money to create a killer website and open for business on the Internet. Business is good and prospects are even better until one day you receive a certified mail letter from the lawyer for ABC, Inc., notifying you that:

(i)                 your domain name infringes on ABC’s federally registered trademark,

(ii)               you must immediately cease and desist from using the domain name and all references to the trademark,

(iii)             you must transfer the offending domain name to ABC, and

(iv)             pay ABC damages equal to all the profits made by your online business.

Domain names can be purchased / acquired from one of several domain registrars such as Domain.com, GoDaddy, Bluehost, HostGator, Namecheap, Dreamhost, Shopify, Wix, and Google Domains just to name a few. 

Domain names pose a specific challenge not only because of the host of options to choose from (e.g. .com, .net, .org, .biz, .info), but because some domain names are protectable under trademark law while others may infringe on the legitimate rights of trademark owners. It is important to understand that obtaining or using a domain name (1) is not a substitute for securing trademark rights (which is usually accomplished by a combination of actual use of the mark in commerce and federal registration) and (2) does not, in and of itself, create or establish any trademark rights merely by its use as an Internet address. The federal trademark and domain name registration systems exist independently with no cross-checking of the other database prior to registration. Moreover, a trademark owner does not have an absolute right to a domain name consisting of its mark, in whole or in part.

Dangers of Trademark Infringement Involving a Domain Name.

Unfortunately, the above scenario occurs far too often to domain name owners. The cease and desist letter alleging trademark infringement should be taken very seriously. Because trademark owners have a duty to protect their marks and to take appropriate action to prevent others from infringing on their marks, more often than not the trademark owner who sends a cease and desist letter intends to follow it with an infringement lawsuit unless the alleged infringer concedes to the trademark owner’s demands.

If you obtain a domain name that is identical or similar to a trademark or service mark that you do not own, you may be the defendant in a lawsuit brought under the Anti-cybersquatting Consumer Protection Act or an arbitration procedure brought under the Internet Corporation for Assigned Names and Numbers Uniform Dispute Resolution Policy (“UDRP”). Defending a cybersquatting lawsuit or UDRP arbitration can be very expensive, especially if you lose. The good news, however, is that there are steps you can take before acquiring a domain name to reduce and possibly eliminate the risk of trademark infringement arising from your use of a domain name.

Avoid Acquiring a Domain Name that Infringes a Trademark.

A prospective domain name owner can substantially reduce the risk that a desired domain name will infringe on a trademark by doing proper due diligence before investing the time and money in registering the domain name. You should never register or purchase a domain name without first investigating if the desired domain name is identical or similar to an existing trademark or service mark. The following is a list of the things you can and should do before you acquire a domain name to investigate possible trademark infringement problems.

1. Do a search on several popular search engines (such as Google) to determine if the desired domain name is being used as a business trade name or the name of any goods or services. Review all links that look like they could contain your desired domain name used as a business name (trade name) or the name of goods or services. If you find a business or any goods or services that are identical or similar to your desired domain name, you should probably seek another domain name.
2. Do a search at Whois.net to see if there are any domain names that use domain names that are identical or similar to your desired domain name or that contain identical or similar text. If you find a trade name or any goods or services that use your desired domain name, you should probably seek another domain name.
   
3. Do a search of the United States Patent & Trademark Office database called the Trademark Electronic Search System (TESS). TESS contains all federally registered trademarks and services marks, all previously filed, but dead or abandoned trademarks and service marks, and all pending applications for trademark registration.
   
4. Hire a reputable search firm to do a national trademark, service mark, trade name and domain name search for you. A good search by a capable search firm will do a comprehensive search of these four important categories and give you a written report of the results. If the search results show that there are any identical or similar trademarks, service marks, trade names or domain names, you should seriously consider seeking another domain name.
   

As an alternative, you can hire a trademark attorney to perform steps 1 through 4 for you. Frequently the question of whether a possible domain name will infringe on another person’s trademark is not obvious and requires knowledge and interpretation of trademark law. It is possible that in some cases a desired domain name will not infringe on another trademark or service mark even if steps 1 through 4 all find identical or similar marks. Whether there is an infringement problem usually depends on the facts and circumstances of each potential domain name and an experienced trademark attorney should be able to tell the difference.

There are many issues to consider when considering registering a domain name and possible trademark infringement should be one of the main ones. By taking some preemptive action, you can avoid being the recipient of a cease and desist letter alleging trademark infringement. A relatively small upfront investment could prevent you from having a very large legal bill defending a trademark infringement lawsuit or arbitration proceeding.

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Disclaimer: The information provided in this article is for general information purposes only and should not be construed as specific legal advice. The application of any matter discussed in this article to anyone’s particular situation requires knowledge and analysis of the specific facts involved.

Contact Nathan Thomas at Peak Law for more information.