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An Intersection Between Trademarks and Domain Names

—Daniel M. Levine

It is no secret that online business is big business.  Companies are constantly increasing their online presence and offerings to better compete in the marketplace.  What impact and effect does this have on trademark holders and their trademarks?

Web addresses are comprised of several parts.  The part after the ‘dot’ is called a Top-Level Domain (“TLD”).  The most common of these, such as .com, .org, and .net, are governed by the Internet Corporation for Assigned Names and Numbers, more commonly known as ICANN.  All website addresses ending in these TLDs are subject to the rules and regulations of ICANN.

Before the ‘dot’ of a website address is called the ‘domain name.’  It is usually registered through a Registrar.  Examples of popular Registrars are Go Daddy, Tucows, and Network Solutions.  These Registrars are bound to follow the dictates of ICANN as it relates to the TLDs ICANN governs.

ICANN requires Registrars to follow the Uniform Domain-Name Dispute-Resolution Policy, commonly referred to as the UDRP.  Under the UDRP a UDRP claim can be made by a trademark holder against a website with a ‘confusingly similar’ trademark.  So, for example, Google could bring a UDRP claim against Gooogle.com or Google.net.  The remedy for a UDRP claim is for the registration of the website to be transferred to the trademark rights holder; there is no monetary compensation available.

To make a successful UDRP claim a party must show three things:

1)      The domain name must be ‘confusingly similar’ to a trademark the complainant has rights to;

2)      The domain owner can have no ‘legitimate interest’ in the domain name; and

3)      The domain name was registered and being used in ‘bad faith.’

So, for example, Nike (the shoe and clothing company) would likely succeed in a UDRP claim against Niike.com for a website selling athletic shoes but would not likely succeed against Nike.org for a club discussing Greek gods and goddesses.  The reason for this is the club has a ‘legitimate interest’ in advertising and providing information about its club but it would be difficult for the owners of Niike.com to show it was not trying to trade off Nike’s trademarks and reputation.

Again, while a UDRP claim can regain an infringing domain name governed by ICANN, the process can be time-consuming and expensive without any chance of costs or fees returned.  The attorneys at Roberts McGivney Zagotta LLC can help you make the most of your online presence by strategizing domain registrations, protecting domain registration information, monitoring and watch services, trademarking and branding, and other related services.

*A note on Country Codes*

In addition to the TLDs, ICANN is responsible for the country-specific codes, known as CCs, for many countries.[1]  Additionally, the World Intellectual Property Organization (“WIPO”) provides dispute resolution services akin to a UDRP claim for many other CCs.[2]   Still, there are some notable exceptions for CCs that do not necessarily have a well-regimented process for obtaining back infringing domains.  For example, China (.CN) and Hong Kong (.HK).

It has become a common scam for parties in these countries to reach out to trademark holders in the United States saying another party, likely fictional, is attempting to register a domain with the trademark holder’s trademark.   What these letters fail to mention is another’s ownership of a domain name with a CC will not affect your trademark rights in the United States.  Holding an ICANN-governed TLD may also be able to solve issues with rogue CCs.

 

The information in this article is for informational purposes only and does not constitute formal, legal advice. Contact the attorneys at Roberts McGivney Zagotta LLC to discuss securing domain registration information to prevent these scams as well as for International trademark strategy.

 

[1] .ag, .as, .bm, .bs, .bz, .cc, .cd, .co, .cy, .dj, .ec, .fj, .fm, .gd, .gq, .gt, .ki, .la, .lc, .md, .me, .ml, .mw, .nr, .nu, .pa, .pk, .pn, .pr, .pw, .ro, .sc, .sl, .so, .tj, .tk, .tt, .tv, .ug, .ve, .vg and .ws.

 

[2] See http://www.wipo.int/amc/en/domains/cctld/.