What’s there to a domain name? You think of something smart, make sure it’s available, get it registered, and you have a new domain name. While that’s how it’s supposed to work, domain names aren’t always the easiest to deal with, especially when you are infringing on the rights of another — hopefully unknowingly. As you consider how brilliant your new domain name is from the commercial perspective, so must you also think of the legal angle.
If you are not careful when you choose your domain name and it conflicts with another domain, you could risk losing it along with all the hard work and money you have invested into the website. Taking extra care when selecting a domain name for your business can help you avoid a legal conflict where you would be forced to give the domain up.
No such thing as copyright infringement
While web content such as images or other content are protected by copyright laws, domain names are not protected in the same way. However, this does not imply that they are not protected at all. In place of copyright law, trademark law protects domain names.
Differentiating between copyright and trademark
In the online world, you will be infringing the copyright of another if you duplicate any of their copyrighted work without obtaining permission from them first. Such copyrighted material may include computer software, images, music, videos, press releases, and books. Whether or not the owner registers their work with the U.S. Copyright Office, they own the copyright to that work as long as they created it.
As mentioned above, domain names are not covered by copyright. Neither are movie titles or book titles, so you should be fine if you register a domain name that matches a movie title. Don’t be so quick to do it though because it can get tricky, depending on if the title in question is a trademark. To be clear, registering a domain name doesn’t automatically mean the domain owner has a trademark on that domain. This means anyone can take out or derive a similar name for their own domain, even competitors. What makes a domain name a trademark is if the name has already been trademarked or if it is particularly distinctive.
More on trademarks
A trademark is a design, symbol, phrase, or word, or a combination of designs, symbols, phrases, or words that distinguish and identify the source of one party’s products from those of other parties. A service mark is defined the same way, but it is a service that is being distinguished this time and not a product. A conflict arises when an entity uses a trademark that results in confusion for customers regarding the services or products in question or regarding their source. The one who owns the trademark is the one who used it first and anyone else after that will have to stop using it and, in some cases, may be required to pay damages to the owner of the trademark.
Consumer confusion or trademark confusion addresses the issue of whether or not the use of a domain name would cause a customer to be confused about a product. For example, if you picked a domain name that is so similar to a trademarked name and you sell a similar product, that would likely be a trademark infringement. The problem here is customers intending to buy products from the trademark owner may end up buying from your site thinking they are buying the other product.
Protection of Trademarks
You can only be affected by trademark confusion if the domain name you want to use is similar to another protected trademark, meaning it is distinctive. For a name to be distinctive, it could be suggestive of the product or service, fanciful, fabricated, or arbitrary in the context of its use. A domain name that uses common words which describe an aspect of the services or goods the website sells is not eligible to be protected. The same applies to a domain name that uses geographic names or surnames. Such names can only be protected if the owner can prove the name is distinct through substantial advertising and sales. Meanwhile, generic domains such as cats.com or dogs.com can never be trademark protected.
Is infringement limited to registered trademarks?
While trademark infringement certainly applies to a registered trademark, unregistered trademarks can also be infringed upon if they fall under the classification of protected trademarks.
How to make sure you stay out of trouble
To avoid causing yourself any problems in the future and possibly receiving a letter you wouldn’t be pleased to see from a lawyer, your first point of call after deciding on a domain name is the U.S. Patent and Trademark Office (USPTO). Once you have confirmed that the domain name you want is available via online name registrars, you should check the USPTO’s database of registered trademarks for trademarked names that are the same as yours or similar. Your search does not end at searching for the exact name: you should also search for synonyms, misspelled variations, and any other names that might pose a problem in the future.
Next, make a wider search on the internet at large, searching for the same terms you searched for before. Lastly, perform the same searches in business name registers. If after your search you find a name or two that will surely pose a problem, it is best to pick something else. But if you are not certain whether they would be problematic, determine whether you offer similar services and products and whether the other company is a popular brand. If you are still not certain, ask your lawyer or go for a different name.