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,
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 articles w/photographs on your website that are automatically updated
each week. http://www.web-source.net
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