United States Trademark Law and Domains

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The number of domain names on the internet is approaching 300 million. They’re registered with hundreds of domain registrars. Timeliness of a domain registration is important. The person who registers a domain name first obtains certain rights, so long as the domain was registered in good faith.Registering a domain with a registrar doesn’t make it a trademark. A trademark is a sign, symbol, name or any combination of the two that’s used in the course of commerce to distinguish one product or service from others. It’s also called a brand. By registering that mark or brand, the owner can restrict its name or logo from being used by somebody else. Both trademark owners and consumers benefit from trademark laws. They protect the trademark owner from having their product confused with another similar product, while also protecting the consumer from purchasing lower quality goods or services by mistake.

The mere act of trying to file a domain name with the U.S. Patent and Trademark Office is a nullity and has no legal effect. It will be rejected. A trademark application for that domain must be filed. The application can be either a use-based application or an intent-to-use application. The use-based application is filed if the mark is already in use in commerce. The intent-to-use application requires an additional fee once the applicant begins using the mark in commerceYou’re not required to register a domain’s name to use, or enforce it. You might still have enforceable common law trademark rights. If registered though, a legal presumption arises that the person who registered the domain’s name is the owner of that mark in connection with the goods and or services listed in the application. After submission, the applicant receives a Notice of Publication that shows the proposed mark for the world to see in case there are any objections to it. If no objections are made, a certificate of registration issues. If an intent-to-use application was submitted, a Notice of Allowance is issued until such time as the domain’s mark is used. Notice of use must then be submitted and the certificate of registration issues.Confusion in commerce is the general element in a domain infringement claim. In support of their claim, the person seeking to enforce their mark must show that they have a valid common law or registered trademark, and that the alleged infringer used that mark in business, resulting in a likelihood of confusion. Infringement can be either negligent or intentional. The crime of cybersquatting is addressed in the context of intentional infringement.Cybersquatting involves the intentional deceptive practice of buying domain names that are identical or confusingly similar to domain names that are registered trademarks. The registrant has no legitimate interest in the domain. In bad faith, the buyer then offers to sell the domain name rights to the person with the registered trademark. The domain name is effectively held hostage until a ransom is paid.

Relief from cybersquatting can come through either the courts or arbitration. Suit can be brought in the federal courts under the Anticybersquatting Consumer Protection Act (ACPA). The purported owner of the domain trademark is required to demonstrate ownership of a valid trademark, and the alleged cybersquatter’s bad faith intent to profit from the domain trademark. Then the complainant must show that what the defendant is trying to sell to the them is confusingly similar to their trademark. Because litigation can take years, it is financially burdensome for the small company.

Non-judicial relief is also available through the Internet Corporation of Assigned Names and Numbers (ICANN). It arbitrates cybersquatting disputes. Arbitration is far more economically feasible, and a matter can be resolved in less than 60 days. An action can be bought by any entity. Although no financial remedies are available, the domain can be either cancelled or assigned to the complainant if they prevail. The cybersquatter has remedies after an unfavorable arbitration decision that might make litigation the better alternative, especially if the cybersquatting is coming from a foreign country.

Diligent protection of a domain trademark is required. Failing to act on infringement can result in loss of a trademark. Action to protect one’s trademark and business should always be taken.

 

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