If you own the trademark registration for a particular term or phrase, you might feel that you also have the rights to the corresponding domain name. That is, if you are a software manufacturer that owns a trademark registration for the name “PHILOSOPHY PROGRAMS”, then you should have the rights to PHILOSOPHYPROGRAMS.COM, right?
In many cases you might not have any claim at all to a top-level domain if you do not already own it. Your rights will vary depending on the specifics of the case, but unless someone registered the domain after you received your trademark registration, you might be out of luck.
An issue of class
When you get a trademark registration, you are ordinarily given trademark rights within a specific class of goods or services. In our “PHILOSOPHY PROGRAMS” example, you would have the exclusive right to use the name “PHILOSOPHY PROGRAMS” in connection with software and related goods or services. If another company started using the name “PHILOSOPHY PROGRAMS” to market and sell their religious seminars, you probably would not be able to do anything about it since no one is likely to confuse religious seminars with computer software programs. Your trademark protection only applies to your specific area / class.
The same kind of logic applies to the ownership of domain names in regards to trademark law. If you have registered “PHILOSOPHY PROGRAMS” for your software products, then you could potentially stop anyone from using PHILOSOPHYPROGRAMS.COM in connection with computer software goods or services. However, if someone owns PHILOSOPHYPROGRAMS.COM and is using it in connection with providing religious seminars, you’d likely be out of luck. The owner of the domain name would likely be able to keep the domain name, and they’d be able to continue using it to promote their religious seminars.
Since similar marks can exist across different classes, you don’t necessarily have the right to a top-level domain name even if you own a trademark registration.
Inactive websites and cybersquatting
What if there isn’t a company actively using the PHILOSOPHYPROGRAMS.COM domain? What if the website is merely inactive, with just a generic landing page or a holding page? Since no one is actively using the domain, it might seem as though you have a claim to it.
In a few cases, you might. But unless you can prove a bad faith registration, you might not have any claim at all to that domain name. If you want to use it for your business, you’ll have to acquire it from the current owner.
What about cybersquatting? The intricacies of cybersquatting confuse many people. The practice was much more widespread in the internet’s early days, when companies didn’t realize its necessity. Opportunities for cybersquatting are far fewer today.
The Anticybersquatting Consumer Protection Act (ACPA) does provide trademark owners with some rights when dealing with bad-faith registrations. That is, the owner of the “PHILOSOPHY PROGRAMS” trademark must prove that someone else registered PHILOSOPHYPROGRAMS.COM after the owner of “PHILOSOPHY PROGRAMS” filed a federal trademark application – or otherwise possessed a distinctive and recognizable common law trademark. Even at that point, the trademark owner has further burdens of proof.
Trademark owners can have difficulty proving bad faith intentions during a trademark infringement case. Typically they have to show that the domain owner uses the trademark for their own profit. Examples include offering the domain to the trademark owner at an unreasonable price and placing competitor advertisements on the page.
Absent signs of bad faith, a domain owner can typically retain ownership if he or she has plans, or claims to have plans, to build a site on the domain. As long as the site does not conflict with the registered trademark’s goods and/or services, the original owner will retain the domain.
If you do encounter a legitimate case of cybersquatting, you can act in one of two ways. The first is using the Internet Corporation of Assigned Names and Numbers (ICANN) arbitration process. This process can move relatively quickly, and does not require the assistance of an attorney. The alternative, suing under the ACPA, can take longer, but also provide you with more definitive ownership of the domain if you prevail. In some cases you can also recoup legal costs from the cybersquatter.
Can’t the Registrar Just Cancel the Domain?
Some business owners initially think they can just have the domain registrar (companies like GoDaddy or Name Cheap) that sold the domain in the first place cancel it, or transfer it to them since they’re the holder of the existing trademark. However – this isn’t how the system works. All domain name registration companies are mandated to follow the Uniform Domain-Name Dispute-Resolution Policy (UDRP) which states that most types of trademark disputes have to be resolved or determined by a court/arbitration before any action can be taken. (Cybersquatting can be handled by an expedited process, including suing under the ACPA which is detailed here.)
Generic Domains as Trademarks
In July of 2020, the US Supreme Court found in favor of Booking.com, allowing them to secure the mark for “BOOKING.COM” which was previously deemed as too generic / not descriptive.
I believe the case was rightly decided. The only issue before the Court was whether the U.S. Patent & Trademark Office could maintain and enforce a “bright-line” rule that says that a generic term combined with a top-level domain (such as .com or .net) could ever qualify for federal trademark protection. The Trademark Office’s position was correctly deemed untenable by the Court because such combinations can be perceived by consumers as non-generic brands (as in the cases of Hotels.com and now Booking.com). Consumer perception won the day, and that’s a boon for consumers and businesses alike.
Include domains in your trademark search
When companies register new trademarks, they should include domains in their comprehensive trademark search plans. Given the many benefits of domain ownership, it has become nearly as important as searches of the Trademark Electronic Search System (TESS) and state trademark searches.
If someone else owns the domain for your intended mark, you can reassess your situation. Ask yourself the following questions:
- Does your mark lose value if you don’t own the corresponding domain?
- Does the domain appear for sale?
- Is someone else using the domain legitimately?
- Is the domain a basic registrar landing page, or does the owner attempt to profit from it with ads?
- Do those ads relate to you or your competitors?
- Would it cost your company time or money to create a different mark?
The answers to these questions will help you plot a course of action. If you answer Yes to No. 1 and No to No. 5, then you’re almost certainly better off rethinking your mark. Answering Yes to No. 3 further solidifies that course of action; legitimate use of your trademark, even in a different class can hurt your brand.
On the other hand, if you answer Yes to No. 2 or No. 4, you might have avenues to acquire the domain. In the case of No. 2 you’ll have to track down the domain owner with a WhoIs search (which can turn into a pain in the case of private registration). In the case of No. 4, you might have a case under ACPA or using ICANN’s arbitration process.
How to Trademark a Domain Name
There are 4 general steps to getting trademarking a domain name, as we covered here.
- Perform A Comprehensive Search
- File a Trademark Application with the U.S. Patent and Trademark Office (USPTO)
- Monitor Your Application
- Finalize Your Registration
Trademarking your domain name is an important part of protecting your intellectual property.
Final word on trademarks and domains
If you own the trademark registration, you don’t necessarily have any rights to the corresponding domain name or web address. You can potentially assert rights to the domain name in certain cases, but not many. Proving bad faith on the part of other domain name registrants can be extremely difficult, if you can even get their contact information to begin with.
While legal remedies exist, they are not always worth the effort. You need to examine your specific situation, including the value of your trademark, before proceeding. Each case will require a different course of action.
Domain name issues can be complicated. Contacting a trademark law firm is usually best for specific legal advice about your case.