A domain name is a web address on the internet. Take for example someone like Harry working at Alpha Prints. His email most likely looks firstname.lastname@example.org. Having a domain name like “alphaprint.com” on the internet relating to the company “Alpha Prints” can add a great advantage commercially. However, problems can arise in instances where a company similarly named, such as Alpha Printables, would also like to have the domain name “alphaprint.com”. A possible solution to this issue would be altering the domain names to better fit each business. Alpha Prints is granted the domain name “alphaprints.com”, whereas the Alpha Printables is granted the domain name “alphaprintables.com” or perhaps just “alpha.com” if available.
When choosing a domain name, it is vital to take into account any existing commercial names and registered trademarks that already exist that may conflict with your domain name. If you choose a domain that is close to an already existing commercial domain name, you may run the risk of losing your domain. This dispute or conflict between domain names is settled through trademark law.
A few basic principles for trademark law to keep in mind include;
- A trademark is any word, name, phrase, symbol, device, or a combination thereof, that identifies and distinguishes the source of the goods or services of one party from the one of another party’s.
- For a trademark to be eligible for protection it must be descriptive and have acquired distinctiveness through marketing and sales. The mark must be clever, memorable and suggestive while also fanciful or arbitrary.
- A trademark cannot be registered when there is a likelihood of confusions between the mark and other registered marks. Confusion general exists when two or more marks are similar, and/or the goods and services associated with one mark are related to the others confusing consumers to believe they are coming from the same source.
When the ownership of a mark is in the midst of a dispute, the feuding parties must establish who takes priority over the mark. It is vital to ensure when choosing a domain that you do not create any potential confusion with existing trademarks already in existence. See some examples below of trademark and domain name disputes.
Audi AG and Volkswagen of America v. Bob D’Amato 469 F.3d No. 05-2359 (6th Circuit, November 27, 2006)
D’Amato registered the domain name www.audisport.com. Through this website, he sold goods such as shirts and hats displaying the “Audi Sport” logo. He also offered advertising space for sale. The court found that Bob D’Amato infringed on the Plaintiff’s famous “Audi”, “Quatro” and Audi Four Ring Logo marks.
Cardservice International Inc. v. McGee 950 F. Supp. 737 (E.D. Va. 1977)
The Plaintiff was the owner of the trademark “Cardservice International”. The Plaintiff was in credit and debit card processing business. The Defendant registered the domain name “cardservice.com”. He offered similar services as that of the Plaintiff. If a user clicked on the Defendant’s URL the user was then taken to the Defendant’s website which advertised commercial card services. The court issued an injunction prohibiting the Defendant from using “cardservice” or any variation thereof in his domain name.
Charles Chips Enterprises Inc. v. Mark Patterson, d/b/a innate 2 Create and Ted Henderson WIPO Case No. D2205-0836 (WIPO arbitration 23 September 2005)
The Complainant was the owner of the “Charles Chips” trademark in the field of snack foods. The Respondents one of the Complainant’s distributors registered the domain name “Charleschips.com”. The Respondents operated a website at which they sold both the products of the Complainant as well as that of the Complainant’s competitors. The panel found that the name “Charleschips.com” was the same as Complainant’s “Charles Chips” trademark. The panel ordered the Respondents to transfer the domain name to the Complainant.
Complexions Rx, Inc. v. Julie Hogan Case number D2002-04841 (WIPO 19 July 2002)
The Complainant had a website Complexionsrx.com at which it sold cosmetic and skin care products. The Complainant also had the registered trademark “Complexions RX” in the Principal Register of the United States Patent and Trademark Office. Nine months after the registration of the Complainant’s trademark the Respondent registered the domain name “Complexrx.com”. The Respondent sold similar products under this domain name. The panel ordered the Respondent to transfer the domain name to the Complainant.