Posted By: Daniela Madrid
What happens when an owner of a trademark wants to use his trademark as a domain name for his website but discovers that the domain name is already being used by a third party? There are several options to resolve this dilemma. The trademark owner can use an alternative domain name suffix, can file a dispute with ICANN, can file suit in court for trademark infringement or cybersquatting.
The majority of domain names end with .com, however, there are many other domain suffixes such as .edu, .org, .net and so forth. If an owner of a trademark discovers that his trademark is being used in a domain name for a website, the owner can simply choose an alternative suffix. For example, if the trademark is CyberWiz and the owner discovers that there is a website CyberWiz.com, then the owner can choose a different suffix such as CyberWiz.org. Choosing an alternative suffix is quick and inexpensive and it enables the owner to use his trademark as the websites domain name. There are some downfalls to this method. This method can create confusion as consumers may not know which website is the correct one they are looking for.
The Internet Corporation for Assigned Names and Numbers (“ICANN”) is the organization in charge of domain name registrations worldwide. In 1999 ICANN created a process called, Uniform Domain Name Dispute Resolution Policy (“UDRP”), which provides an alternative approach to resolving disputes over domain names. However, this process is limited to situations that involve alleged cybersquatting. The complainant must submit to a mandatory administrative proceeding in which three elements must be proved:
- the domain name is identical or confusingly similar to a trademark
- the domain name registrant has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad-faith.
The UDRP process is quicker and potentially less expensive than a lawsuit. However, because there is a requirement of proving bad faith by the third party using the domain name, some trademark owners may not be able to use this option.
Trademark Infringement & Cybersquatting
The owner of the trademark can also file a lawsuit in court. The trademark owner can allege trademark infringement or cybersquatting. For trademark infringement the owner would have to prove that he is the owner of the mark and that the third party is using that mark or something similar to it that people may confuse the two marks. The key issues with a trademark infringement claim is to prove that the third parties use of the mark causes confusion, mistake, or deception in the market as to the source of the goods or service.
Cybersquatting occurs when a person registers a domain name of a known business in order to sell the domain name for profit to the business. In other words, the person does not have a legitimate interest in the domain name other than to sell it to the business once that business discovers that its trademark is already being used in a domain name. In order to succeed in a cybersquatting suit the owner of the trademark must prove:
- that he owns the trademark,
- the domain name registrant had a bad-faith intent to profit from the trademark,
- the trademark was distinctive at the time the domain name was first registered, and
- the domain name is identical or confusingly similar to the trademark.
Because a cybersquatting claim requires proving a bad-faith intent on the part of the domain name registrant, some trademark owners may not be able to exercise this option.
There are other options available to a trademark owner such as buying the domain name from the registrant, which can potentially be less expensive than the procedures described above. However, trademark owners can rest at peace knowing that there are options other than declaring cyber war!