Trademarks in the land of Domain Names.
In an earlier series of Recipe for Protection, Anyone? posts, the different types of Intellectual property were identified. Here we zero in on certain issues peculiar to one form of IP, trademarks and in particular its relationship to domain name registration.
With the advent of the internet, electronic commerce knows no geographical boundaries and therefore there is the need to also protect domain names. These can also be registered with the United States Patent and Trademark Office but must be used as a trademark.
The domain name must identify the “what” as in, the source of the goods or services and not limited to identifying the website of the business. The domain name being trademarked must be the same or similar for trademark rights to apply. For example, pierone.com is a trademark because the company sells products under the name pierone.com. Trademarks trump domain registrations such that the owner of a trademark may be able to force the domain name owner to transfer or stop using the domain name.
As a precautionary measure it is advisable to register similar variations of the name as well so as to avoid the cost and time required in fighting with an unscrupulous Internet scammer. See Jacobson, Domain Names, Trade Names, and Trademarks.
A registered trademark used outside of the U.S. (e.g., Internet sales) allows for filing of applications for foreign registration based on the U.S. registration. This helps prevent the importation of goods using a mark that is confusingly similar to your mark by registration with U.S. Customs.
Prior existing trademarks and Domain name Registrations
AntiCybersquatting Protection Act (ACPA)
Uniform Dispute Resolution Policy (UDRP).
AntiCybersquatting Protection Act (ACPA) provides remedies to a trademark owner against defendants who obtain domain names “in bad faith” that are identical or confusingly similar to a trademark or service mark. It prohibits the registration and use of a domain name that is confusingly similar to an existing TM.
This would suggest not only is it an existing trademark but that it existed before the registration of the “alleged infringing” domain name.
A trade mark owner may bring an “in rem” action against a domain name, where the defendant cannot be located if Continue reading My Trademark and Your Domain? – The Benefits of Prior Existing Rights