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Domain Names And Trademark Law

Tips

Although each situation is very unique, there are some tips to remember when registering your domain name or before deciding to enter into a legal conflict over a domain name. Please consult an attorney who specializes in intellectual property before taking any action.

" A name that clearly identifies a product or service in a particular market usually qualifies as a trademark. For example, Coca-Cola.com clearly identifies a specific product (Coke) in a specific market (consumer beverages). If a dispute ever arose over the ownership of Coca-Cola.com, there would be no case, Coca-Cola would have it hands down.

" Usually if your business name is very distinctive, you can also lay claim to the associated domain name (if you have trademarked the name of you business). For example, if Joe decided to name his business Joe Smith Tools of Alabama, he would probably have no problem staking claim to JoeSmithToolsofAlambama.com.

" Usually, the first person who uses a name will get to keep ownership of it in case of a conflict. So if Joe has been using JoesTools for 20 years, he has a good chance of retaining ownership to the trademark if someone else comes along claiming they would like to start using it.

" And as it was mentioned earlier, if the conflict over a name could create customer confusion in the marketplace, some sort of infringement probably exists and only person will be able to use that name.

Case Examples

Here are two example domain name disputes and their outcomes.

Dirty Word

A fashion retailer, French Connection, launched a huge marketing campaign titled French Connection United Kingdom and in their creative ad materials, shortened the campaign to FCUK. They also registered FCUK as a trademark but did not register FCUK.com. Two months later, an internet consultant did register the domain name. French Connection brought suit against the consultant claiming that the consultant was infringing on their trademark. They also cited example cases where companies were being granted use of domain names registered by others. However, the consultant argued that:

" 'FCUK' was a well known alternative to the swear word on the internet,
" It was a way of getting round censorship filters on certain internet providers.
" It was well known the term meant a web site had pornography.

The judge ruled in the consultant's favor claiming that French Connection had not proven that any confusion would exist in their marketplace as a result of not using the name, and had also not proven that there were any remote similarities between French Connection's business and the intended business of the internet consultant.

"Iran" out of Ideas

Another interesting case was between a company called the Britannia Building Society and someone who had registered BritanniaBuildingSociety.com. Britannia had the trademark for the name but not the domain name. They sued and asked the judge for a summary ruling so that a long drawn out legal battle could be avoided. Britannia's main argument was that the individual who had registered the domain name was not using it and clearly was "squatting" on the domain to use it fraudulently to make money. The individual who had the domain name argued that he intended to build a business supply British building workers to employers in Iran. The judge was not impressed with the defense and Britannia won the case.

Conclusion

Disputes over trademarks and domain names are extremely tricky. Be prepared to shell out big bucks if you wish to fight over a domain name. Never take any chances without consulting an attorney who specializes in intellectual property cases.


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