When a domain name becomes a trademark? (Applied to genTLD)

As the Internet is getting more commercialized, wars for domain names and the use of trademarks online become more widespread. After President Clinton signed the Consumer Protection Act against cybersquatters and the formation of the Uniform Dispute Resolution Policy (UDRP) approved by the Internet Corporation for Assigned Names and Numbers (ICANN), trademark owners now have a right to sue the domain speculators, cybersquatters and other users of domain names to protect their trademarks rights.

The most popular key question: What should the domain name of the trademark owner look like?

To answer this question, it is necessary to have a fundamental knowledge of US legit definition of a trademark - which brands are considered to be protected trademarks and what this protection entails. Only, in this case, we can understand all the subtleties of the "dot-com" sphere.

About American legit definition of a trademark

A trademark is a word, phrase, symbol or image, or a combination of words, phrases, symbols or images that identify and distinguish the origin of the goods or services one from other similar. Trademarks identify one seller of goods or services from other sellers of similar goods or services and confirm that all goods bearing the same brand originate from the same source and possess the corresponding qualities.

Mark can be recognized as a trademark only if it is "distinctive." There are four types of brands:

  • Random trademarks are specially invented brands or brands used by goods that are not directly related (for example, XEROX, or AMAZON brand for a bookstore);
  • Suggestive (imbued) brands are brands that hint at a product or service, but do not describe it (for example IMENA for a domain name registrar);
  • Descriptive marks are brands describing a product or service (for example, NATIONAL BOOK OUTLET for a book-selling company);
  • Generic trademarks — consisting of common names of goods or services (FREE CHECKING for a free bank account verification service).

Random and suggestive brands are inherently distinctive. Descriptive marks can be recognized as distinct if the trademark owner can prove the existence of a "secondary meaning" - that the brand is associated specifically with this product or service. Generic brands are not at all distinctive.

American legislation that defines the notion of a trademark primarily protects consumer rights. State trademark protection laws exist to protect the consumer from confusion in the market. Companies that use existing or similar brand names violate the rights of the trademark owner only if this can lead to confusion by origin, authorship, affiliation or sponsorship. Mixing as such may not be required.

In accordance with the standard "likelihood of confusion", the same trademarks can be used by different owners for different goods and services. For example, the ABC brand can be registered for cosmetic products, glowing signs and broadcasting services. Despite the fact that all owners have the same trademark, this does not lead to the possibility of confusion in the market. It is virtually ruled out that the consumer will buy ABC cosmetics, based on their own associations with the TV anchor of the news broadcast on ABC.

The US Patent and Trademark Office divides goods and services into 42 international classes to help define the boundaries of areas of exclusive brand ownership. However, these classes serve only as guidelines. The probability of mixing can exist between goods of different classes and vice versa, it is possible that there is no probability of confusion between goods of the same classes.

In accordance with the federal legislation on trademarks, not only registered trademarks are subject to protection. Brand rights are given to its owner not by registration, but by use of a trademark. However, federal trademark registration gives its owner the opportunity to use it over the whole country from the moment of registration. Therefore, trademark registration notifies all subsequent users that the registrant has superior rights to this brand.

Domain Names and Trademarks

It is easy to determine whether a domain name should match the trademark, just use the basic principles.

Is the domain name used as a trademark?

The first and most important question is whether the domain name is actually used as a trademark. In other words, does the domain name serve as an identifier of origin?

A domain name that simply serves to identify a user's location on the Internet is not an identifier of origin, it's just an address. For example, AMAZON.COM is not only an identifier of origin but also an address, as it is simultaneously the company name and the address of the AMAZON.COM website.

Conversely, the domain name www.barw.com is just the address of a website owned by Bradley Arant Rose & White LLP. In this case, the domain name serves only as an address where the company's website can be found and can not be considered an identifier of origin.

Is the domain name distinctive?

If the domain name is used as an identifier of origin, and not the site address, we need to address the main issues highlighted above. If the domain name is merely descriptive or a generic term ending in a domain ending (.com, .ua, .com.ua), the domain name does not pass the distinctive strength test.

For example, the owner of a bookstore with the name NATIONALBOOKOUTLET.COM uses a domain name as an identifier of origin - this is the name of his company. Nevertheless, the brand is descriptive, and therefore not protected as a trademark.

What does all this mean?

Protecting your domain name with a trademark is not always so critical. The vast majority of trademark disputes relate to the use of terms in domain names that are identical or similar to the level of confusion with trademarks.

So, despite the fact that the World Wrestling Federation does not use the domain WORLDWRESTLINGFEDERATION.COM as an identifier of origin, the domain name includes its registered trademark WORLD WRESTLING FEDERATION. According to the Uniform Dispute Resolution Policy (UDRP), WWF was able to get back this domain name from a cybersquater who had no right to use WORLD WRESTLING FEDERATION name.

In the same way, the company owning the Tokyo chain of restaurants Benihana has a registered trademark of BENIHANA OF TOKYO. Even though it does not use BENIHANAOFTOKYO.COM as an identifier of origin, the company was able to obtain the transfer of rights to this domain name, previously unscrupulously registered by an individual.

Therefore, if you own the trademark MYTRADEMARK, you do not need to use the MYTRADEMARK.COM domain as the origin identifier to protect this domain name from being used by others. If another person or organization registers the domain "mytrademark.com", however, it hasn't legal rights to the trademark MYTRADEMARK, or it registers this domain with unfair intentions, you will be able to get this domain transferred to you. You do not even need to have the rights to the trademark, which is the entire domain name, you only need to own the rights to the second-level domain - the word preceding .com - in order to get the domain transfer from the dishonest registrar to you.

The difference between owning a trademark for the entire domain name or a second-level domain is very thin and blurred. However, this difference will become deeper with the "dotcoms" increasing in their number .

Based on GigaLaw.com

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