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
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.
are two example domain name disputes and their outcomes.
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
" It was well known the term meant a web site had pornography.
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.
out of Ideas
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.
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.