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ilovealdiWayne Stephenson ran his ilovealdi.co.uk fan site for over a year before he received a 12-page takedown notice from the German-based retailer. Stephenson claimed the site promoted the Aldi brand, highlighted savings, and provided a forum for visitors to share recipes using Aldi’s private brand products. Despite his insistence that the site contained no advertising and was not run for personal gain, UK regulatory body Nominet deemed that the site took unfair advantage of Aldi’s trademark rights by using the company’s name in its URL. The case was settled without legal proceedings. Trademarked domain name profitsIn the mid-90s, astute minded individuals realised that they could register .com domains using the names of big brands, and then sell them on to the relevant company at a considerable premium. Originally named ‘domain poaching’, the process became widely known as cybersquatting in 1999 after the passing of legislation in the USA. Many entrepreneurs saw this as a valid form of virtual real estate investment, with some ‘domainers’ generating total profits exceeding £250m. As the example of ilovealdi shows, however, it is not just the intentional cybersquatting that is frowned upon; even sites that don’t intend to seek compensation from the trademark owner can find themselves the target of dispute. The issue is not one of profit, but the protection of the brand itself. Maintaining control of domains related to a trademark is a necessary part of managing brand identity and public perception. Whilst ilovealdi.co.uk was intended to reflect favourably on the brand, it still caused concern for Aldi who had no control over what was posted on a website bearing its name. Lessons to learnIn 1999, ICANN – the organisation responsible for overseeing and regulating issues relating to the Internet’s domain name system – implemented the Uniform Domain-Name Dispute-Resolution Policy (UDRP) to combat the issues of cybersquatting and trademark infringement. Under UDRP, any person registering a domain must state that they have a valid right to the name and that the registration will not violate the rights of any third party. The terms also require an agreement to participate in arbitration if any third party should make claims of infringement. For business owners, the lesson is clear – ensure that your trademarks are properly registered, and purchase your desired domains at the earliest opportunity. Should someone poach a domain that gives the impression of being owned by your brand, seek a dispute resolution service in your jurisdiction that can begin the UDRP arbitration process. In most countries the law is on your side, and you should be able to settle the matter out of court. If you are establishing a new business, remember to research available domains first, as it is unlikely that you will be able to claim the rights to a domain if it was in existence before your brand was trademarked.
Leave a ReplyBy: David Ludwig [2/4/22] Trademark rights and
domain name ownership overlap in many ways, but they are not the same. Domain name ownership does not necessarily establish trademark rights, and trademark ownership does not necessarily give you the right to own the corresponding domain name. I am often approached by clients who have received a cease and desist letter related to their website or domain name who were surprised to learn that someone can still accuse them of trademark infringement despite the fact that they own the domain name containing the trademark at issue. Similarly, I have also been approached by clients who have recently received a trademark registration who believe that the trademark registration allows them to seek turnover of the corresponding domain name. There is quite a bit of misunderstanding regarding the interplay between trademark rights and domain name ownership. What is a trademark?In order to fully understand how trademark rights and domain name ownership affect one another and differ, it helps to start with a basic understanding of both. In general terms, a trademark (also sometimes referred to as a “service mark”) is any name, logo/design, or slogan used to promote a business. A business does not need to register the trademark to have rights (but registration does offer more robust rights). Rather, trademark rights arise whenever a mark is “used in commerce” -whenever the name, logo, or slogan is used in connection with the products or services offered by the company in such a way as to create an association in the minds of consumers connecting the mark with the company. Every time a can of Coca-Cola® is placed on a grocer’s shelves, or every time a box of french fries displaying the McDonald’s® “golden arches” logo is handed to a hungry child, those famous trademarks are being “used in commerce.” Accordingly, a trademark is something that makes a connection in the minds of consumers between a particular product or service and the company that provides that product or service. Once trademark rights are established, they are not absolute. For example, McDonald’s® would have difficulty using its trademark rights to prevent another company from using the same name for an information technology (IT) consulting business (although for very famous marks, the trademark dilution doctrine might be used to prevent such uses). This is because trademark rights are limited not only by the mark but also by the type of products or services that the mark is used in connection with. This is why there can be a prominent national airline and also an unrelated company selling plumbing fixtures that both do business under the name Delta.® What is a domain name?A domain name, by contrast, is a string of characters that serves as an identification string for internet addressing purposes. When a domain name is typed into a web browser, there are rules and procedures of the Domain Name System (DNS) that tell the browser the location of the server where the corresponding website files are hosted. Accordingly, a domain name is something that makes a connection for internet users between a specific string of characters and the location of the owner’s website content files. When does a domain name affect trademark rights?The short answer is “never”—a domain name, by itself, cannot confer any trademark rights on the domain name owner. This is because a domain name, by itself, does not create a consumer association between a company and its products. However, a business’s website that advertises or sells the company’s products or services can create this type of consumer association. In this sense, however, the content of the website itself creates trademark rights, not necessarily the domain name. When does a trademark affect domain name rights?In general, domain names are a “first come, first served” commodity. The first person to purchase a given domain name retains the rights to the name until it is sold or the registration term expires. This is generally the case even when the domain name is a trademark. If I happened to register starbucks.com before the coffee company, the coffee company may have to post its website at a different domain name address until my registration expires. However, there are certain exceptions to this rule. “Cybersquatting” is when a person registers a domain name containing a trademark without a legitimate purpose and merely to prevent the trademark owner from having it (or re-sell it to the trademark owner at a steep profit). In cases of cybersquatting, a trademark owner can seek the return of a domain name that contains a trademark. There are a couple of different procedures to accomplish this. Still, in general, a trademark owner must show that the domain name was registered in bad faith and with the intent to profit from the trademark at issue and that the domain name is confusingly similar to the trademark at issue. In determining bad faith, a court or other tribunal will consider the strength of the trademark owner’s rights whether
A trademark owner can recover an improperly registered domain name in these situations. Although there are significant areas of overlap between trademark use and domain names, the two sets of rights differ both in how they are acquired and how they impact one another. A business with an online presence should pay careful attention to both sets of rights when building a brand and investing in online advertising. To learn more about Dunlap Bennett & Ludwig and how we assist you, contact us by calling 800-747-9354 or emailing . Tagged with: domain infringement, Domain Name, Trademark, trademark infringement, trademarks Posted in: Internet, Trademark To learn more, contact one of our partners below: David’s practice focuses on civil litigation in the areas of patent, trademark, copyright, internet / domain names, commercial transactions, government contracts, community associations, and bankruptcy law / creditors’ rights, as well as trademark and copyright prosecution, and corporate and small business law. He is co-chair of the firm’s litigation group, supervising several lawyers, and he has served as an attorney for local and national clients in federal and state court litigation and arbitration matters, as well as in bankruptcy proceedings, TTAB disputes (trademark Notice of Opposition and trademark Petition to Cancel proceedings), domain name disputes (ACPA, UDRP, and URS proceedings), government contract bid protests and Tucker Act litigation, and numerous other forums and proceedings. To learn how Mr. Ludwig can assist you with your legal needs, click here. Can a domain be registered twice?Registering multiple domains is now possible with many companies on the web. For your convenience, it's best to get your domains and the respective services to host them online from one and the same company, so that you can control all aspects of your web presence from just one place.
What if domain name is already taken?Try to buy it
You can always offer to purchase the name you want from the current owner. If the Whois information is public, you can reach out to the domain owner directly and see if they're interested in selling. If the info is private, you can see if they have contact information listed on their website.
Can two businesses have the same domain name?Every domain name is unique-so no two websites can have the same domain name. A domain name can be any combination of letters and numbers, and it can be used in combination with the various available domain name “extensions” including: “Generic top-level domains such as .com, . net, .
Does my domain name have to match my company name?Do Your Domain Name & Business Name Have To Match? Your business name and domain do not need to match. The primary difference between business and domain names is that a business name is used for identification, branding and legal purposes, whereas a domain name is a digital website address.
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What happens if you register a domain name for an already established trademark company?
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