December 21, 2008

Domain trademark disputes

By Barry

Domain trademark disputes


Do you worry about running into trademark disputes with your domains ? Here are some simple steps and resources to help you do some due diligence. While this process is not exhaustive, it should help you avoid the more obvious issues.

Google is your friend

Search your term in Google and if you see a business using the same name or a similar name, you will need to do more work. This is especially true if it is a non-generic name because companies sink a lot of money into brand recognition and are more likely to be aggressive about defending it.

Generic terms are not immune. They can be used as brands for other products so you need to pay attention to any brands that use that term.

Why companies pursue trademark enforcement

Many businesses develop a brand as a company asset. The trust and reputation that is built up by a brand helps the company do business and gain market share.

There are two main reasons to pursue trademark infringement:

  1. Trademark infringers can confuse consumers and thus undermine the brand trust and reputation. At a minimum the brand image is less controlled by the company.
  2. Allowing the trademark to be diluted by trademark infringers may undermine any future trademark lawsuits

Typos may infringe the trademark

You also need to check for typos of your terms. I haven’t found a satisfactory tool that comprehensively covers typos but has a domain typo tool I use as part of the process. I still use the old fashion paper and pencil method because I have found common and significant typos that the online tools have missed.

At this point, if you do not have a very valuable domain, you can stop here assuming you have not found any red flags.

Red Flags for domain names

If I find a major brand that has the same or similar terms (confusingly similar), I prefer to pass on the domain. There may be ways to get around these issues but the subject is quite complex and you may get a legal letter even if you are likely to prevail. The assumption is that small companies or individuals will comply with the terms of a legal letter because the potential cost of defense or hassle involved may be too much.

Sometimes advertising or selling other products or services that cannot be confused with the trademark holder will allow you to avoid issues but there is no guarantee. Frank Schilling’s case recently shows that issues can still arise and in this case the domain was parked.

Further trademark research

Patent and trademark office databases are a great source to search. I start with the USPTO TESS database. If I get a hit in this database after having had a flag in the first steps, I will usually avoid the domain and look for something else to address the same market.

Here are some other international databases you can search to be comprehensive.

Canada Trademark Database

Mexico’s trademark office

Madrid Express Trademarks database

ROMARIN (International Trademark Information Database)

Reading domain dispute cases

There are three key elements to a domain dispute under ICANN dispute resolution policy:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

Here are some resources if you want to delve into the details of domain disputes

Selection of UDRP-related Court Cases

National Arbitration Forum Domain Name Dispute Proceedings and Decisions

Uniform Domain Name Dispute Resolution Policy

Related post

I also posted previously about some cases in the National Arbitration Forum regarding domain name trademark disputes

Simple due diligence before buying a domain will help you avoid 99% of problems but there is no guarantee. As you will see if you read the cases, how you use the domain can be a critical factor. Your actions such as approaching the trademark holder to sell the domain to them may also reflect on your intentions when registering (see iii in the Resolution Policy above).

Disclaimer: I am not a lawyer and do not play one on TV. Nothing here should be construed as legal advice. Please consult a lawyer who specializes in domain disputes for legal advice.