you plan to launch your web site, picking a domain name can seem like
the most simple and fun step in the entire process. Unfortunately,
the name you pick may already be in use, may conflict with another
legitimate business name, or maybe the name is taken by someone else
and is conflicting with your claim to the name! Before you register
a domain name, make sure you understand the potential risks associated
with trademark infringement. As always, this article does not attempt
in any way to provide legal advice. Consult your attorney before making
any business decisions regarding your domain name.
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.
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.
Names and Trademarks
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.