Be Careful of Trademarks When Registering Your New Domain

28 Feb 2017 / Aliesha Ellington

Choosing the right domain name for your business is the first step in setting yourself up for a successful online presence, while the wrong domain name could land you in legal hot water.

It is much more common than you may think for to make mistakes that could end up costing them thousands of dollars, all over a domain that may have cost as little as $20. If you are not aware of the possible pitfalls you could find yourself making the same costly mistake, by purchasing a trademarked domain name.

This article will explain the concept of trademarked domains and how to avoid the liability of registering such a domain. However, it is important to note that this is just general information. If you are concerned that you may have infringed on a trademark, then we would recommend you contact and attorney that specialises in intellectual property law.

What Does it Mean to Register a Trademarked Domain Name?

This refers to the registration of a domain name that is identical to, or confusingly similar to someone else’s trademark. When it comes to trademarked domains that have been improperly registered by a third party, there are two legal issues which may arise. One is cybersquatting, and the other is trademark infringement. The difference between the two is largely one of the intent of the registrant.

If a domain name is registered with ill-intentions, then the registrant may well be liable for cyber squatting. This differs from a trademark infringement where the registrant has not necessarily registered the domain with ill-intent and the court or administrative body will look at whether the use of the domain name is likely to cause confusion for the customer between the trademarked brand and the third party registrant.

What is Your Intent at the Time of Registering that Domain Name?

When you register a domain, what you intend to do with it is an important factor in determining the outcome of any trademark infringement dispute.

Good Faith Intent

Though good faith intent will not automatically win a domain dispute for you, it will definitely play an important role in determining whether you can retain and use your domain name.

If you legitimately had no idea that the name you registered was trademarked, then you registered the domain name in good faith. Perhaps the name belongs to an obscure product manufacturer halfway around the world and there was a slim chance of you even being aware of their existence. In such a scenario, it is reasonable for you not to have known that the domain name infringed on a trademark.

Sometimes you can also have good faith intent even if you know that the name is trademarked. If your main intention is to provide criticism or parody, that can be considered acceptable use, as long as you are in no way leveraging the trademark to make money. It’s also important that no one visiting your site is confused and thinks that your site was created by the entity that owns the trademark.

It’s important to note that even if you have good faith intent, you can still be held responsible if it was possible for you to have found out if the domain name was trademarked. This is why it’s a good idea to do some research to check whether any name is trademarked before you register its domain.

Bad Faith Intent

If you registered the domain in bad faith, that may be all that is required to rule against you. Registering a trademarked domain with bad faith means that you were aware that a name was trademarked and you bought it anyway, to profit in some way from that domain.

Some examples of bad faith domain registrations include:

  • Registering a trademarked domain with a new top-level domain in order to sell the name back to the trademark owner (e.g. samsung.mobile).
  • Using a trademarked name to trick people into visiting your website in order to make a profit.
  • Creating a website that looks as though it has been created by a trademark owner to sell a similar product to the public.

What are the Potential Liabilities?

If you have already registered a domain that infringes or may infringe on someone else’s trademark, there could be serious consequences involved. Even if you’re registering the domain on behalf of your company, as the registrant, you could be personally responsible.

If the trademark owner notices and decides to take action, there are several different measures they can take. They are as follows:

Uniform Rapid Suspension (URS)
If your domain name uses a new generic top-level domain (such as .app or .sports), URS, which is overseen by the Internet Corporation for Assigned Names and Numbers (ICANN), is the easiest claim for a trademark owner to make. All they need to do is make a claim to a registry and if the website is a very clear trademark infringement, it will go through arbitration, after which it may be taken down for the remainder of the registration period.

Unique Domain Name Dispute Resolution Policy (UDRP)
Also overseen by ICANN, a UDRP claim is more intensive and can have greater ramifications. An ICANN-approved Dispute Resolution Service Provider (DRSP) will evaluate whether your domain name was registered in good or bad faith, and to what degree your website infringes on a trademark. If you are found guilty, your domain can be cancelled or transferred to the trademark owner.

You should know that a UDRP proceeding, much like a URS proceeding, does not involve any live testimony or deposition. There is no actual trial. In these proceedings, the DRSP is looking for indicators of what your intent was. So, often they will look at things like what you uploaded on your website, or if it was possible for you to not know that the trademark existed.

Anti-Cybersquatting Consumer Protection Act (ACPA)
Though the ACPA is an American law, many other countries have similar laws that might affect you as well. If a trademark owner decides to go through the courts and you are found guilty, you can be subject to up to $100,000 per domain name in statutory damages plus attorney’s fees. You will need to transfer the domain name as well, even though at this point, this would probably be the least of your concerns.

Now you know what the issues are and what the consequences can be. In summary, you can register a trademarked domain, but it is your intentions at the time of registration and your use of the domain that would determine whether you are liable for cybersquatting or trademark infringement.

Courts have consistently protected the public’s right to use the trademarks of others to engage in criticism, commentary, news reporting, and other forms of non-commercial expression. So, if your intent is not to profit from the trademark, you may be allowed to use the domain in question. It is always best to err on the side of caution however, so be sure to do your research. 

You can do a domain availability searchhere or find out more about .nz domains here

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