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Master of My Domain…And Your Domain Too!

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Clients frequently ask me to explain the difference between domain names and trademarks.  They don’t understand whether registering a domain name has any impact on trademark rights, or whether using (or registering) a trademark has any impact on domain names.  Thankfully, this is one circumstance where the answer is actually fairly easy to understand — even without a love of circuitous complexity

Let’s take trademarks first.  Trademarks are designations of source or origin.  They tell consumers where a product or service originated, and act as a form of consumer protection.  Depending on who you believe, trademarks were either first developed by Roman blacksmiths or medieval guilds, but in either case they were intended as a way to “brand” a product as originating from a single, specific source.   Unlike patent rights (which must be the subject of a registration to have any validity) trademark rights (in the United States) are derived from use.  Trademark registrations provide certain procedural advantages (and there are some circumstances where registrations are not only useful but necessary); however, it is only use of the mark that develops any rights to the mark.

Domain names are nothing more than addresses.  To quote that ever-popular information source, Wikipedia, “A domain name is an identification label that defines a realm of administrative autonomy, authority, or control on the Internet, based on the Domain Name System (DNS).”  As far as trademark law is concerned, a domain name is no different than a street address, and thus entitled to no trademark protection without separate “use” as a trademark.  In other words, while a domain name can be a trademark, use of a term solely as a domain name does not itself provide any trademark rights.  Thus, Amazon.com develops no trademark rights through use of its domain name www.amazon.com.  However, Amazon.com does develop trademark rights through its independent use of “Amazon.com” as a trademark on its site and through its marketing efforts.

“But wait,” you might say, “I heard about this ICANN thing, and you can stop folks from using a domain name that infringes on your trademark, right?”  Yes, the one twist in all of this is that while use of a domain name does not create trademark rights, valid trademark holders can challenege domain names where:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

Thus, you can’t simply register the domain name “coca.cola.com” if you are not, in fact, Coca-Cola.  In addition to the ICANN dispute resolution system I linked to above, there are other weapons available to trademark holders, most notably the Anti-Cybersquatting Consumer Protection Act, which can provide more extreme legal impact.  We’ll talk about that one another day.

In short, you should walk away from today’s post with a very simple piece of knowledge: trademark rights are not domain names, and domain names are not trademarks.  However, a valid trademark can trump a domain name under certain circumstances, but the reverse is not true.