Enrico Schaefer - July 12, 2019 - Domain Name Trademark Issues
If you have a domain name issue, chances are the first question your attorney will ask you will be about whether your domain name is trademark protected. A domain trademark lawyer can typically increase leverage if the domain name matches your trademark, or otherwise has common law trademark rights.
Domain names and trademarks go together under law. Cybersquatting (also known as domain squatting), is protected by the ACPA. Cybersquatting is the unlawful registering, trafficking in, or using an Internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.
What many people do not understand about domain names and trademarks is that the United States Congress has provided special protection for domain names under the Lanham Act. https://www.nolo.com/legal-encyclopedia/content/lanham-act.html
In 1999, Congress decided that domain names are akin to the sign above your storefront, or akin to the name of your product on the product itself. Essentially, the United States Congress has eliminated the classic ‘fair use’ defense for any third party commercial use of a trademark in a domain name where the domain name registrant knows or should have known of the third-party trademark and is willfully trying to take advantage of the trademark owners goodwill. What does that mean? It means you cannot try and profit, directly or indirectly from someone else’s trademark by registering that trademark as a domain name.
The fact that a domain name is available for registration through a domain registrar such as GoDaddy or Network Solutions does not give you the right to register that trademark protected domain name. In fact, the clickwrap agreement that you are contractually agreeing to when you register the domain name specifically states that you represent you are not infringing any third-party trademark rights by registering that domain.
A good domain name lawyer who understands trademark law will be able to help you navigate some of the more complex issues around the registration of trademark protected words in domain names. The anti-cybersquatting consumer protection act is a relatively new US law with very little case precedent. This means that there are still a number of open questions concerning the interpretation of that cybersquatting statute. One of the more challenging issues is establishing a bad faith intent to profit against the defendant or recipient of the trademark infringement threat letter. There are a number of factors which need to be analyzed in order to establish a bad faith intent to profit in the registration of a trademark protected domain name. You also have a variety of different requests for relief that you can make to the court if you find yourself having to bring a lawsuit against a cybersquatter. The most obvious request for relief that a client makes to their lawyer is a forcible transfer of the domain name to the trademark owner. However, statutory damages and other damages may also be available.
If you are a trademark owner, whether registered or common law, and you have a domain name issue, feel free to contact one of our domain name attorneys for more information about how we can help.