A website’s Domain Name, or URL, is the internet address identifying the website. Recent laws have made it acceptable to include trademarked words or phrases in a website’s domain name. However, this also makes it possible for the domain name of one website to infringe upon the subject matter of a trademark.
For example, if a website’s domain name includes the word “Reebok” in its domain name, it could be cited for infringing upon the shoe brand named Reebok.
Also, domain names that cause confusion over similar trademarked material can be cited for trademark infringement. So, a shoe website that includes the word “Reebock” might also be subject to infringement laws, since a consumer might confuse “Reebock” with “Reebok”. This is true even if the two words are spelled differently- the main focus is whether the domain name would cause confusion for the average consumer.
When determining whether a domain name is infringing upon another’s trademark, courts will usually consider many different factors. The main test however is whether an average person would confuse the domain name with a registered trademark.
Some factors to consider that would help avoid domain name infringement include:
- Whether your website offers similar products or services as the trademark owner’s
- Whether a customer would type in your domain name when attempting to find the other company online
- Whether your business distributes or sells the product through similar distribution channels
- Whether the other company’s name is very well known (consider “household names” such as Band-Aid, Pampers, etc.)
Another factor to consider is that many words and phrases can be trademarked without them being formally registered. In general, trademark protection arises through usage, regardless of whether the product is registered or not. It may be necessary to do some research before you attempt to obtain a domain name that might cause confusion.
Here the test would be the same- if the other party’s domain name causes confusion with your trademark, it could be considered trademark infringement. If you discover a potentially infringing domain name, you may have several options for legal relief:
- File a civil lawsuit: You may be able to obtain damages for your losses caused by the infringement. Infringement cases have led to substantial damage awards in past cases.
- Cease and Desist: You can send the infringer a cease and desist letter to stop the trademark or copyright infringement of your website. This is a letter informing the other party that their website might be in violation of trademark laws. You can also obtain cease and desist orders through the court- these orders are backed by authority of law.
- Criminal Penalties: Many state and federal statutes make it a crime to knowingly infringe upon protected material. Criminal penalties for infringement can include fines, jail time, and seizure of illegal goods.
You should also be aware of the idea of “cyber-squatting”, or intentionally obtaining domain names that are identical or substantially similar to trademarked material. Recent laws such as the Anticybersquatting Consumer Protection Act (ACPA) have made cybersquatting illegal. Punitive damages may be available in instances where the defendant acted in “bad faith” or with malicious intent.
Lastly, there are many resources available to help you either identify websites that may be infringing upon your trademark, or to help you check whether your domain name might cause confusion over another’s trademark.
Choosing the right domain name is essential for the success of any business enterprise online. If you need legal assistance or advice for domain name infringement, you may wish to contact an experienced lawyer in your area. Domain name infringement is considered to be a serious violation, but there are many protections available for owners of trademarked material. Alternatively, you can also contact an entertainment lawyer if you need help filing an infringement claim to protect your own website.