The Interplay Between Trademarks and Domain Names

It is a common belief that obtaining a domain name insulates the owner from trademark infringement lawsuits. This is not true. For instance, acquiring AOL.net does not shield the owner from a trademark infringement lawsuit brought by American Online, as AOL is trademarked. In essence, federal trademark law trumps any granting of a domain name by a local registrar.

On the other hand, registering for a domain name does not automatically give the registrant a protected trademark in the name. Domain names can contain and themselves be trademarked, but most domain names are not. Even if the domain name is intended to be used in commerce, a trademark is not spontaneously generated from that commercialization.[1] So a “race” to a domain name between two competitors does not grant the winner a trademark. The winner simply acquires the right to use the domain name.

Some confusion can arise from the fact that both domain names and trademarks need to be “registered.” However, obtaining a domain name from a registrar is completely different from registering a trademark with the United State Patent and Trademark Office. The former is leased from a private (or quasi-governmental) entity with a specific end date; the latter is registered with the USPTO and can exist forever as long as the owner continually defends it against infringement.

Trademarking a domain name is possible, but it requires an affirmative action beyond obtaining the name from a registrar. The name should be registered with the USPTO and approved for use in commerce. Though non-registered trademarks can be defended against infringement if in use, the protection is weaker and the case is much harder to make.[2] If one wants to trademark a domain name, he should speak with a lawyer and seek official registration of the mark.

[1] Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1052 (9th Cir.1999).

[2] See this information from the USPTO: http://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf

The Anticybersquatting Consumer Protection Act: When Domain Names Infringe Trademarks

The primary federal statute governing the intersection of trademarks and domain names is the Anticybersquatting Consumer Protection Act (ACPA), enacted in 1999 and codified at 15 U.S.C. § 1125(d). The ACPA was Congress’s direct response to a wave of registrations in which opportunists registered well-known brand names as domain names with the intent to sell those names back to the brand owners or to profit from the association with a famous brand.

The ACPA makes it unlawful for a person to register, traffic in, or use a domain name that is identical or confusingly similar to a distinctive mark, or identical, confusingly similar to, or dilutive of a famous mark, with a bad faith intent to profit from the mark. Courts assess bad faith using a non-exhaustive list of nine factors, including: the registrant’s trademark rights in the domain name; whether the domain name contains the registrant’s legal name; prior use of the domain name in connection with bona fide goods or services; and the registrant’s intent to divert consumers from the mark owner’s online location for commercial gain or to tarnish the mark. 15 U.S.C. § 1125(d)(1)(B)(i).

The UDRP: A Faster Alternative to Federal Court

Trademark owners who discover that someone has registered their mark as a domain name have a choice between federal court litigation under the ACPA and an administrative proceeding under ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP is a faster and less expensive alternative to federal court for cases where the primary remedy sought is transfer or cancellation of the domain name rather than money damages.

To prevail in a UDRP proceeding, the complainant must prove three elements: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the registrant has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in bad faith. UDRP proceedings are conducted entirely by written submissions before panels of one or three arbitrators appointed by ICANN-accredited dispute resolution providers such as WIPO or the Forum. Decisions are typically issued within 60 days of the complaint being filed, and the remedy is limited to transfer or cancellation of the domain name—no monetary damages are available.

Trademark Use in Domain Names: Nominative Fair Use and Criticism Sites

Not all uses of a trademark in a domain name constitute infringement or cybersquatting. The nominative fair use doctrine permits parties to use another’s trademark in a domain name when the domain is used to refer to the trademark owner’s goods or services in a way that is not likely to cause confusion about source or sponsorship—for example, a fan site, a reseller’s authorized product page, or a comparative advertising site. However, the line between permissible nominative use and infringing use is fact-specific and has been litigated extensively.

Criticism and gripe sites—domains such as brandnamesucks.com or companyname-reviews.com—present a distinct set of legal issues. Courts have generally held that such sites are not infringing when they clearly communicate that the site is not affiliated with or operated by the brand owner and when the content is genuinely critical or expressive rather than commercial. However, registrants who use such domain names to drive traffic to competing commercial sites, or who create consumer confusion about the relationship between the site and the trademark owner, may face UDRP or ACPA liability.

Practical Steps for Trademark Owners with Domain Name Concerns

Businesses that have registered their trademarks should also secure the corresponding domain names as part of a comprehensive brand protection strategy. At a minimum, this typically means registering the .com version of the mark, the .net and .org versions, and any country-code top-level domains relevant to the company’s geographic markets. Businesses that fail to register their own domain names create openings for cybersquatters and bad actors.

When trademark owners discover that a third party has registered a domain name incorporating their mark, the first step is to evaluate whether the registration appears to be in bad faith. If so, a cease-and-desist letter may prompt the registrant to transfer the domain voluntarily—particularly if the registrant is aware that the UDRP or ACPA provides a straightforward path to forced transfer in clear cases of cybersquatting. If voluntary resolution is not forthcoming, a UDRP proceeding or ACPA action in federal court may be the appropriate next step.

Revision Legal advises businesses on trademark registration, domain name disputes, UDRP proceedings, and ACPA litigation. If you have concerns about a domain name incorporating your trademark, contact us at 855-473-8474 or through the contact form on this page.

Keyword Metatags, Domain Name Lookalikes, and Initial Interest Confusion

The interplay between trademarks and domain names extends beyond direct registration of a trademarked name as a domain. Courts have addressed the use of trademarked terms in website metatags and as keyword triggers in search advertising—practices that can create what courts call “initial interest confusion.” Initial interest confusion occurs when a consumer is initially attracted to a competitor’s website by the unauthorized use of a trademark, even if the consumer ultimately realizes before purchasing that the site is not affiliated with the trademark owner. The Ninth Circuit recognized initial interest confusion as actionable trademark infringement in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), though courts have diverged on how broadly to apply this doctrine in the keyword advertising context.

For domain name owners, the key practical lesson is that the relationship between trademarks and domain names is governed primarily by federal trademark law—not by ICANN’s registration system or any private registrar’s terms of service. A domain registration is a contractual right to use a string of characters as an internet address; it is not a license to use a trademark. Businesses that want to protect their brand online need both a domain registration and a federal trademark registration working together. Neither alone provides complete protection. Revision Legal advises clients on coordinated trademark and domain name strategies that address both dimensions. Contact us at 855-473-8474.