Domain Names And Trademarks Explained

Have you ever gotten an email or a letter in the mail that went like, “your domain name’s infringing our trademark. Hand it over or else.”?

Well, not in those exact words. But will you be disturbed at seeing such?

I won’t be surprised if you do. Not too many are really aware of this sort of thing, nor do they know how often this happens.

So today, I’m going to touch on exactly what the title says: I’ll explain a few things about domain names and trademarks.

But before I go on, the usual I’m-not-a-lawyer-and-this-is-not-legal-advice disclaimer still applies. Sorry about that, but it can’t be helped there are some people who just don’t seem to “get it”.

With that aside, first things first. What exactly is a trademark?

A trademark is a form of intellectual property right. It’s used to distinctly identify who is the source of the goods of one party from others.

Unlike a copyright that seeks to protect an original literary or artistic work, a trademark applies to a word, phrase, symbol or design, or even a combination of any of them. Essentially, it’s supposed to tell you that this product A is made and, more often than not, marketed by producer X.

If you hear or see the word Coca Cola, no doubt you’ll be thinking of the softdrink and its manufacturer. If you hear or see the word Microsoft, it’ll of course be referring to the software giant.

Essentially, a trademark tells you “if I see this word on this thing, I know only this guy owns and sells it.” At least, that’s what it’s supposed to tell you.

Trademark rights aren’t really created “overnight”. They’re earned through usage of the term or so in commerce.

So if I use the words Dave Zan to sell widgets (as in I label my widgets Dave Zan for people to plainly see), I’m actually using the words as a trademark. This is just a basic idea, though, and it can get more complex depending on certain factors.

What might surprise you to know (if you haven’t yet) is that a trademark is not required to be registered at all if one can demonstrate what’s called a common law trademark. Although one would have to somehow prove such, a “formal” registration (like one filed at the Unites States Patents and Trademark Office if you’re US-based) that’s eventually granted trademark status otherwise gives more benefits like telling when it was first used and give nationwide constructive notice.

Among the main problems facing trademark holders is what’s called “likelihood of confusion”. If they see someone else selling a product bearing that trademark, the relevant consuming public might confuse that someone as being the owner of that product when he really isn’t.

That somewhat deprives the trademark holder the ability to maximize their commercial success based on their “hard work”. Or worse, a customer might confuse that party selling this product as being or authorized by the same company using their trademark without their permission.

Every trademark holder has the burden of protecting and enforcing their trademark rights. If they fail to consistently protect them, they risk losing it.

And of course, who’d want to lose something so precious after pouring so much into it?

Now what exactly does trademarks have anything to do with domain names?

A lot.

When domain names were first made available to the public in the early ’90s, it so happened that certain parties registered domain names bearing those trademarks. That presented another and more serious challenge for their respective holders.

To make things worse, many of them used those domain names in such a way as to intentionally make money off their trademarks. Major brand holders were especially affected by this.

Back then there were very few options on how to resolve domain name-trademark disputes. What made it tougher was some had to go through court to get definitive answers, spending lots of time, money and effort that could’ve been used more productively elsewhere.

The past couple of years has seen various developments on this very issue. Especially for .com domain names, trademark holders can either file a suit in court under possibly any applicable law they have, or utilize what’s called the Uniform Domain-Name Dispute Resolution Policy (UDRP).

If you read your registrar’s contract, you’ll find the UDRP mentioned and incorporated there. In a nutshell, it says they can take the domain name away from you and transfer it to the trademark holder whether you like it or not.

Now you might be thinking, “Isn’t that rather unfair?”

My usual answer to such questions like that is it depends on what side of the fence you’re on. While it might be unfair to the one on the receiving end, it’s definitely fair to the mark holder because they have to protect and enforce their trademark rights.

One unfortunate reality about this is there are some parties who might be “overreaching”. Some believe only they have absolute exclusivity over this or that term (which trademarks don’t grant), others might think this party is “infringing” their trademark when they’re actually not.

So what can this tell you so far?

Trademark infringement is an inherent risk in domain names. While it’s not a requirement, it never hurts to check if the term is being used as a trademark prior to registering it.

Or if you already have a domain name that’s possibly bearing a party’s trademark, you also risk losing it if someone sees how you’re using it (or even the lack of it) is infringing their trademark rights (if any). It can’t be helped that there are some people who seem fit to dispute your ownership of the domain name, although some are legitimate.

As time goes by, more and more will be revealed about this subject. Given its complexities, it’s just not possible to write everything there is to know and somehow compress it in one single blog entry.

Whatever the case, also be aware of this inherent risk. You never know one day you might suddenly wonder why the domain name’s gone despite not possibly having done anything wrong.