Understanding and Using Trademark and Domain Name Registrations : Part 2
This is part two of a two part blog about the differences between trademarks and domain names, and the commercial importance of registering both. Look for the first post that explains the protections associated with both trademark and domain name registrations.
When A Domain Name Incorporates Your Trademark
In addition to federal trademark infringement litigation, there are two specific administrative protections and laws which provide relief if an unauthorized user registers a domain name which improperly incorporates another’s trademark.
The Uniform Domain Name Dispute Resolution Policy (“UDRP”) has been incorporated by ICANN as part of the domain name registration process agreed to by all registrants. This policy requires that domain name registrants represent and agree in part that their registration of a domain name “will not infringe upon or otherwise violate the rights of any third party”, that the domain name is not being registered for an unlawful purpose, and that the registrant “will not knowingly use the domain name in violation of any applicable laws or regulations.”
The UDRP requires mandatory arbitration for certain violations of this policy. If a domain name registrant violates this agreement the trademark owner can act to have the domain name registration cancelled or transferred to the trademark owner.
The Anticybersquatting Consumer Protection Act (“ACPA”) provides similar protections allowing trademark owners to prevent another from profiting off the improper registration of a domain name. The ACPA prevents a party from registering, trafficking, or using a domain name which is identical or confusingly similar to another’s trademark in bad faith with an intent to profit. The ACPA was passed to prevent “cybersquatting”, a concept where a registrant obtains a domain name identical or confusingly similar to another’s trademark and offers to sell that domain name to the trademark owner for significantly more money than the registrant paid for the domain name. The UDRP and ACPA are extremely valuable tools trademark owners can use to prevent unauthorized use of their trademarks in domain names.
While most businesses act to secure a domain name because of the immediate access it provides to a website, they would be best served to secure both a trademark registration and a domain name registration. If a business registers a domain name and does not act to register its trademark it is vulnerable. Trademark registration is often more expensive and time consuming than domain name registration because of the legal technicalities, but it also comes with greater benefits, rights and protections. A domain name registration is important for directing access to a webpage but it does not protect a business from unfair competition or consumer confusion. Nor does it develop long term brand loyalty among the public the way trademark protection does. The needs of any business can vary greatly, but securing both a domain name and a trademark registration will best protect the business in the long run.
For more information, contact the trademark attorneys at the law firm Schiffrin & Longo, P.C.
Disclaimer: The information in this blog post (“Post”) is provided as general information and for educational purposes. This Post does not provide legal advice and may not reflect the current law in your jurisdiction. No information contained in this Post should be construed as legal advice from the author, nor is it intended to be a substitute for legal counsel on the subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this Post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country, or other appropriate licensing jurisdiction.