Can a Domain Name Infringe on a Trademark?
A domain name is capable of infringing a trademark, however, the specific use and context of the domain name can affect the analysis.
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Background
Briefly, a trademark is a word, symbol, design, or phrase used to identify the source of a particular good or service. Rights to a trademark are gained through use in commerce and given further protection through registration. Domain names are simply purchased on a first come first serve basis. However, a domain name can contain a trademarked word or phrase, which begs the question: Does a domain name containing or comprised of another’s trademarked word or phrase infringe that trademark?
Cybersquatting
One issue implicated here is cybersquatting, where someone registers a domain name of a well-known company or brand with the goal of reselling it at a profit. The Anti-cybersquatting Consumer Protection Act (ACPA) is a federal law that prohibits domain name registrations that are identical or similar to trademarks or personal names. To prevail on an anti-cybersquatting claim, the claimant must demonstrate: (1) its mark is distinctive or famous and entitled to protection; (2) the defendant's domain name is identical or confusingly similar to the plaintiff's mark; and (3) the defendant registered or used the domain name with a bad faith intent to profit.
Gripe Sites
A similar issue involves “gripe sites.” These are websites where the domain contains the trademarked word or phrase and are aimed at criticizing the trademark holder. Despite the critical commentary in the substance of the website, if the domain name is too similar to the trademark, the website owner could run into infringement issues. Many of these sites get around this trouble by adding words like “truth” or “sucks” after the trademarked word in the domain so as to signify the critical nature of the site, which can undercut any confusion as to its source. Further, if despite the critical nature of the site, it sells goods or services, this commercial activity can also lead to infringement liability. Therefore, it is best to avoid using other’s trademarks as domain names where possible, especially if the website is of a commercial nature.
Any business looking to set up a webpage should select its domain carefully to avoid potential infringement or cybersquatting issues, as this could be a costly mistake.
For more information on trademarks and intellectual property in general, see our trademark services practice page.
Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.
This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.
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