The rights to trademarks and domain names overlap in many ways, but they are not the same. The ownership of a domain name is not sufficient to establish trademark rights, and trademark ownership alone is not sufficient to own the domain name that corresponds to it.
Clients often contact me after receiving a cease and desist letter regarding their websites or domain names and are surprised to learn that the trademark infringement claim can continue despite the fact that they own the domain name that contains the trademark in question. In a similar way, I have also been contacted by clients with trademark registrations who believe that trademark registrations allow for the transfer of the corresponding domain name. Trademark rights and domain name owners are often viewed as separate rights.
What is a trademark?
It is important to start with a general understanding of trademark rights and domain name ownership in order to understand them more fully. To put it simply, a trademark (also sometimes called a “service mark”) is anything created for the purpose of promoting a business. It is not necessary to register a trademark for a business to have rights (although registration gives a stronger grip on those rights). In modern times, trademark rights arise when a mark is “used in commerce” – when a company’s name, logo, or slogan is used on its products and services to create consumer associations that connect the brand with the business. Coca-Cola® cans are on store shelves, and McDonald’s® “golden arches” logos appear on boxes of french fries handed to hungry children. Trademarks are used to link products and services with a specific company.
Once trademark rights are established, they are not absolute. For example, McDonald’s® would have difficulty using its trademark rights to prevent another company from using the same name for information technology (IT) consulting business (although for very famous marks, the trademark dilution doctrine might be used to prevent such uses). This is because trademark rights are limited not only by the mark but also by the type of products or services that the mark is used in connection with. This is why there can be a prominent national airline and also an unrelated company selling plumbing fixtures that both do business under the name Delta.®
What is a domain name?
A domain name, by contrast, is a string of characters that serves as an identification string for internet addressing purposes. When a domain name is typed into a web browser, there are rules and procedures of the Domain Name System (DNS) that tell the browser the location of the server where the corresponding website files are hosted. Accordingly, a domain name is something that makes a connection for internet users between a specific string of characters and the location of the owner’s website content files.
When does a domain name affect trademark rights?
The short answer is “never”—a domain name, by itself, cannot confer any trademark rights on the domain name owner. This is because a domain name, by itself, does not create a consumer association between a company and its products. However, a business’s website that advertises or sells the company’s products or services can create this type of consumer association. In this sense, however, the content of the website itself creates trademark rights, not necessarily the domain name.
Trademark rights aren’t absolute once they’ve been established. In terms of McDonald’s®, its trademark rights would not be effective in preventing another company from using the same name for information technology (IT) consulting firm (although the trademark dilution doctrine might apply). As a result, trademark rights are not only limited by the mark, but also by the products or services associated with it. This is why it is possible for one company selling plumbing fixtures to do business under the name Delta® and another national airline to do business under the name Delta®.
How does a domain name work?
Domain names, on the other hand, are strings of characters used as identifiers on the Internet. Domain Name System (DNS) tells the browser where the web files for a domain name are located when a domain name is typed into the address bar of a web browser. In other words, a domain name is a string of characters that users can connect with the location of a website owner’s content files.
Do domain names affect trademark rights?
Domain names do not confer any corresponding trademark rights on their owners — by themselves, a domain name cannot serve as a trademark. Domain names do not, by themselves, create a consumer association between a company and its products. A company’s website, however, which advertises or sells its products or services, can create this kind of association with consumers. A domain name, however, does not necessarily create trademark rights, since the content of a website does.
What happens when a trademark affects a domain name?
Most domain names are first-come, first-serve commodities. Until the domain name is sold or the registration term expires, the first person to purchase it retains ownership. Even if the name is a trademark, it retains ownership until sold or the registration is expired. When Starbucks registers its domain name before I do, it may have to use a different domain name address until my registration expires.
The rule is, however, subject to some exceptions. The term “cybersquatting” refers to registering a domain name that contains a trademark without the intention of officially utilizing it (or selling it to the trademark owner at a steep profit).
Cybersquatters can seek the return of domain names containing trademarks in cybersquatting cases. This can be done in a few different ways. Nevertheless, a trademark owner must prove that a domain name was registered in bad faith and that it is confusingly similar to the trademark at issue as well as that it was registered with the intent to profit from the trademark.
The strength of a trademark owner’s rights in determining bad faith is considered by a court or other tribunal
- If the owner of the domain name can legitimately claim the name,
- there is legitimate business use of the domain name,
- In order to dissuade customers from visiting the trademark owner’s site, the domain owner has shown that they intend to do so.
- It has been offered for sale at a profit, or the owner may be in a position to sell
- Among other things, the domain owner has registered a number of domain names that are similar to trademark registrations
In these situations, trademark owners can recover a domain name that was improperly registered.
While trademarks and domain names share many aspects, how they are obtained and how they impact each other are very different. Building a brand and investing in online advertising require businesses with an online presence to carefully consider both sets of rights.
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