Thorny Legal Problems
The sudden growth of the Internet has given rise to a host of thorny legal problems. One such problem is the conflict between the registration of domain names and trademark rights.
To register a domain name, you need not submit any proof that you have a trademark in a selected name. You do have to determine whether a prospective domain name has been registered already. Even if a "second level" domain name has been chosen (e.g., the "ibm" part of www.ibm.com), you can choose the same name if you match it with a different top-level domain name (e.g., .com, .org., .net).
Network Solutions, the company that has handled the lion's share of domain name registrations up to the present, has an on-line search engine that lets you find out whether your favorite domain name is available. What it doesn't tell you, however, is whether someone is using the name as other than a domain name.
That's where the problem arises. Under federal and state trademark law, a person or company may acquire proprietary rights to a name or a mark that identifies a product or service they sell. One of the most famous examples of a trademark is "Coca-Cola." It's both a name for the business and one of the world's most famous products. Like many other famous companies, Coca-Cola invests an enormous amount of money in protecting the value of its trademark.
The Problem of Cybersquatting
Many companies have only recently discovered the connection between trademark rights and domain names. Some of them have been rather rudely awakened to find that the names in which they have invested so much have been taken by others. For example, the domain name "mcdonalds.com" originally was registered by someone other than McDonald's, which eventually paid for the rights to the name.
The term for people who have registered names in hopes of cashing in on them is "cybersquatters." Some cybersquatters have cashed in on their prescience by selling the domain names. Others have found themselves on the wrong side of a lawsuit. The owner of a trademark may have a legitimate claim for trademark infringement against someone who uses the trademark as a domain name, if that use could confuse consumers. Courts are generally receptive to claims of trademark infringement. Those who register a domain name without regard to the trademark rights of others do so at their peril.
Avoiding Trademark Problems
If you are thinking about registering a domain name, you should give some consideration to whether you might be interfering with anyone's trademark rights.
First, you should avoid choosing a name you know is a pre-existing trademark, especially if it is used by a large company. You may be able to steer clear of trademark problems if you will use an existing name for a product or service completely different from the use of the trademark owner. For example, if a company sells pharmaceuticals under the name of "Doodad," you might still register "doodad" as a domain name if your company sells ice cream cones and avoid trademark problems. But I don't recommend trying to register a domain name for selling ice cream cones, monkey wrenches, or anything else under a name like "Coca-Cola" unless you are spoiling for a fight.
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You should also avoid registering the name of a competitor as a domain name. It may seem like a clever way to divert your competitor's customers, but it is also a great way to end up as a defendant in a lawsuit for precisely that reason.
The best way to make sure that use of a domain name will not run afoul of someone's trademark rights is to do a trademark search. A number of firms specialize in conducting fee-based trademark searches, which will tell you whether the term you want is already in use.
You can also do your own search on the Internet at the United States Patent and Trademark Office. This site contains a searchable database containing an almost current collection of trademarks that have been registered with or are pending before the U.S.P.T.O. The database does not, however, contain any state-registered trademarks or unregistered trademarks. This database is a good start for a search, but to do a thorough search, you should hire a search firm. You should also consider talking to an attorney.
Protecting Your Trademark on the Internet
What do you do if someone else has registered your trademark as a domain name? If the use of the domain name is likely to confuse consumers, or if it is likely to injure or dilute the value of your trademark, you may have a legal remedy.
Filing suit may be an option. But a cheaper and faster alternative is to proceed under the dispute-resolution policy adopted by the entity that registers the offending domain name. Under the current policy, the domain name registrar will revoke an offending domain name if a trademark owner offers proof of its registration and of efforts to notify the party of the infringing use of the trademark.
This dispute resolution policy has undergone many changes in the last few years, however, and appears to be changing once again. A new uniform dispute resolution policy recently was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), which was incorporated last year to manage domain name allocation.
Under this new policy, a trademark owner can present its claim to the registrar of the offending domain name. The dispute is then turned over to a panel of neutral persons who resolve the matter within 45 days. The entire process is intended to cost the disputants less than $1000 and to take much less time than a lawsuit. Since it is a very new policy, it remains to be seen how well it will work.
If you want more information about this new policy, you can get information about it at the ICANN Web site. As of this writing, this new policy was not yet posted online as the policy in force at Network Solutions.
Of course, before taking any legal action against someone for use of a domain name it makes sense to consult with an attorney.
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