Domain Names And Trademark Law

Customer Confusion

Unfortunately, legal conflicts over domain names are few and far between compared to other types of lawsuits. The legal fees associated with domain name conflicts can be extremely high, so before you decide to duke it out with someone over a domain name, make sure your pockets are deep. Unless there is a clear winner (i.e. Coca-Cola probably has a right to Coca-Cola.com), the primary concern over who should have rights over a domain name is whether customer confusion will be created in the market place. Let's look at an example.

Let's say Joe Smith owns a chain of hardware stores called JoesTools. One day, Joe decides to start selling his tools on-line, so he attempts to register JoesTools.com. To his dismay, he discovers that someone else has already registered JoesTools.com and intends to use the site to sell hardware tools just like Joe. If you a customer and are looking to purchase tools, you could be confused who you would be buying tools from. In this example, only one of the parties will likely end up owning JoesTools.com because their purposes are so similar. However, if the web site JoesTools.com was to be used to sell computer software utilities (i.e. different products, different market), Joe Smith may not be able to get his JoesTools.com because the owner does not intend to compete in the hardware business. The example above could swing either way: there is no formulaic method for determining ownership.

Domain Names and Trademarks

If you have a legitimate non-internet business, you may decide to trademark the name of your business. For example, Joe Smith may decide to attempt to trademark JoesTools so that other competitors cannot decide to use the name in the future. Joe may decide, after he discovers that JoesTools.com has already been registered, to sue the existing owner claiming that the use of the domain name infringes on his existing trademark for JoesTools.

However, just because you register your brand name with the United States Patent and Trademark Office (PTO), it does not mean that you automatically have the right to use the equivalent domain name. So even though Joe Smith has registered JoesTools with the PTO as his trademark, he does not necessarily have the right to use JoesTools.com.