IS YOUR DOMAIN NAME A TRADEMARK
INFRINGEMENT?
By Shelley Lowery
I recently received an email from a concerned, fellow Internet business
owner, asking for my opinion on an issue that could literally destroy
his Internet business and the business of several other domains
involved.
He had received legal notice from a prominent company, stating that
he needed to relinquish his use and rights to his web site domain
name because it contained three letters that infringed upon their
trademark and their domain name. This same company also
contacted several other Internet business owners and made similar
demands.
Should a company that registers a specific trademark have the ability
to destroy numerous businesses that legitimately registered domain
names?
Should a company that registers a trademark have the responsibility
of ensuring that a domain name registration agency doesn't issue
domain names that may be a trademark infringement? Or should an
Internet business have the responsibility of making sure a potential
name doesn't Infringe upon a registered trademark? Where does the
responsibility lie?
Ultimately, the responsibility lies with the domain name registrant, as
the trademark laws that apply in the hard copy world also apply on the
Internet.
Any company that registers a trademark has the right to protect their
trademark and has the right to notify you that your domain name is
infringing upon their trademark. Why? If your domain name has the
potential of confusing the public into thinking the trademark holder is
somehow affiliated with your web site, they may bring infringement
claims against you. The courts would have to make the decision
based upon the trademark laws and if your domain name, in fact, has
the potential of confusing the public.
Domain name registrants can protect themselves as well. If you have
a registered domain name that doesn't infringe upon any trademarks,
you too may be able to register a trademark. Registering a domain
name as a trademark isn't easy, but it can be done. Although you can't
register the http://www.or the .com, if the use of your name fits the
laws criteria, it can be registered. You should consult with an attorney
familiar with the Internet, trademarks and the laws prior to registering
your domain name as a trademark.
For a complete explanation, visit:
http://www.uspto.gov/web/offices/tac/notices/guide299.htm
As stated by the United States Patent and Trademark Office,
http://www.uspto.gov/ "A mark composed of a domain name is
registerable as a trademark or service mark only if it functions as a
source identifier. The mark as depicted on the specimens must be
presented in a manner that will be perceived by potential purchasers
as indicating source and not as merely an informational indication of
the domain name address used to access a web site." In other words,
the use of a domain name must not be used simply as an address to
direct customers to your web site, but must be used to identify
the products or services of the business claiming the trademark,
which provides products or services via the Internet.
If you're in the market for a domain name, you may want to consider
searching the Trademark Electronic Search System,
http://tess.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk
prior to registering a domain name. By researching the trademark
regulations and knowing your rights, whether you hold a trademark or
a domain name, you may be able to avoid the possibility of litigation.
About the Author
Shelley Lowery is the Webmistress of Web Source - Your Guide to
Professional Website Design and Development. Join The Syndicator,
our new, free article syndication program and display complete
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