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Domain Names and Trademarks: What If The Domain Name You Want is Unavailable?
by Guest Blogger
Domain names are not trademarks. Like telephone numbers, URL addresses are comprised of a unique string of characters that correspond to particular content on the world wide web.
Domain names may include trademarks and many trademark owners are eager to have a domain name that is comprised primarily of their trademark, for obvious reasons. Consumers who are looking for a business may, at least initially, presume that the URL associated with that business is comprised of the trademark plus the coveted .com top-level domain.
However, a domain name that a trademark owner hopes to use for her business may not be available. The domain name may be in use by a third-party who also lays claim to trademark rights in the same term â albeit in connection with different goods or services. Delta Airlines uses the domain name www.Delta.com. Delta the faucet manufacturer uses the domain name www.DeltaFaucet.com. owners may also find that the domain name they wish to use is unavailable but is "for sale." Cybersquatters watch new trademark filings and may snap-up domain names just ahead of new trademark owners, or may stash away scores of domain names. The cost of registering domain names is low and the potential payoff is apparently good.
There are also some "fair uses" of trademarks that are incorporated into domain names that do not violate trademark owners' rights. A federal court found that a seller of used automobiles was not violating unfair competition laws by using the domains names www.buy-a-lexus.com and www.buyorleaselexus.com to sell and lease LEXUS vehicles, although Toyota, the owner of the LEXUS trademark, disagreed.
Domain names that are confusingly similar to a trademark that are registered and used in bad faith may be recovered through legal mechanisms intended to combat cybersquatting. The most common vehicles are Uniform Domain Name Dispute Resolution Policy ("UDRP") and the Anticybersquatting Consumer Protection Act ("ACPA"). But I have seen the frequency of use of these legal avenues for relief decline over the past ten years. Here are my theories that may explain the trend.
Cybersquatters Are Smart and Patient
If you believe that a cybersquatter is a reasonable business person who has no need to use a domain name and therefore will be willing to transfer it in exchange for a nominal or even reasonable sum, you are likely to be surprised.
Cybersquatters invest in domain names for the long haul. They have gotten wise to the legal requirements that would allow a court or other tribunal to divest them of domain names and therefore avoid creating evidence of their bad faith conduct. This means they may sit on the dormant domain names for years waiting for the right opportunity to sell.
Some cybersquatters are hosting domains name with offshore registrars that do not participate in UDRP proceedings and/or reside abroad making it difficult to gain personal jurisdiction over them in a UDRP proceeding.
If an initial "ping" to a domain name holder that is sitting on a dormant domain name does not produce a reasonable response, you are likely to be frustrated unless your budget is significant.
Think Outside the Box - You Have Options!
Trademark owners now have a plethora of top-level domain options, including .net, .org. and .biz. Although .com remains king, the introduction of ICANN's new top-level domains that will include .trademark or .generic term, will further shake up the way in which consumers look for brands on the Internet.
Certain domain names that are easy to remember and spell may be very effective in directing consumers to your commercial web site. A law firm in town whose name is comprised of particularly hard to spell last names (our state has restrictions on law firms operating under a trade name) uses the domain name www.DerbyCityLaw.com. This is a catchy and quick shorthand that gets consumers where they are going.
Rise of Search Engines ("Google it")
When clients seem hung-up on recovering a particular domain name, I ask them how they find web sites on the Internet. It seems to me that the most common practice is for consumers to use a search engine, which for all of my devices defaults to Google, to find businesses. I do not believe that many people type have the patience to type in a precise string of characters into a small browser on a mobile device. In fact, more and more people are using voice recognition software to locate web content, particularly when using mobile devices. This makes me wonder is the term "typosquatting" used to describe cybersquatters who sit on common misspellings of a trademark.com domain name might be replaced with something like "audiosquatting."
Although there are instance of domain name registration and use that violate unfair competition laws, and may even amount to trademark infringement in certain instances, most businesses do not need to spend money unnecessarily chasing a particular string of characters to insure an robust commercial Internet presence.