Can Someone Take My Domain Name if They Trademark it?22nd March, 2023
In an increasingly digital world, a domain name is a key tool for businesses and organizations. Even companies that offer little or no e-commerce products or services still benefit from a well-designed website with an easy-to-find domain name. This raises important questions: What if someone else applies for or has the trademark for your domain name? Can they take the domain name? The answer is “it depends”—while a trademark does not give a party automatic rights to take a related domain name, it could be the basis of a viable cybersquatting claim. In this article, our domain name dispute attorney provides a comprehensive overview of the key things that you need to know about domain name law and trademarks.
Background: A Trademark is a Key Intellectual Property (IP) Tool
The United States Patent and Trademark Office (USPTO) describes a trademark as a unique symbol, design, or phrase that distinguishes a company’s products or services from those of others. It is a key tool for protecting a brand and its reputation, and it helps consumers easily identify and choose a company’s products. Trademarks are protected under intellectual property laws, and the registration process provides evidence of ownership.
Trademark Registration Does Not Come With Automatic Rights to a Domain Name
While a trademark is a valuable form of IP protection for many businesses and organizations, registering a trademark with the federal government does not automatically grant rights to a corresponding domain name. If a domain name related to the trademark is not yet owned, the party that registered the trademark still needs to obtain the domain name with the Internet Corporation for Assigned Names and Numbers (ICANN) through the proper registrars. If the domain name for the trademark in question is already owned by another party, the trademark holder may or may not be in a position to take action to get that domain name.
How to Deal With Another Party Filing for a Trademark for Your Domain Name
Is another party with trademark rights—either active or pending—seeking to get your domain name? It is imperative that you know what to do to protect your best interests. Here are the three key paths that these cases typically take;
Proactively Oppose their Trademark Application:
If you believe someone else is attempting to register a trademark for your domain name, it is possible to oppose their application by submitting evidence of your prior use or rights to the trademark. This can include proof of your domain name registration, business name registration, or prior use of the mark. It is important to act quickly as trademark opposition procedures vary depending on the jurisdiction but usually have a time limit for filing. When possible, a proactive approach is best. Oppose a trademark application before registration is finalized.
Consider Options for a Low-Conflict Resolution:
Not every conflict over a trademarked domain name ends in a difficult legal dispute. In some cases, it may be possible to resolve the matter through negotiations, such as transferring the domain name in exchange for compensation or agreeing to coexist under different marks. An attorney with expertise in domain name law can help you assess the situation and negotiate a resolution.
Prepare to Resolve/Defend a Cybersquatting Claim:
The Legal Information Institute defines cybersquatting as the bad faith registration of another party’s trademark-protected domain name. If the other party continues to use the mark or domain name in question, they may be violating the Anti-Cybersquatting Consumer Protection Act (ACPA). A trademark holder may bring a cybersquatting claim against a non-trademark holder that has a domain name. How exactly this type of case should be handled depends on the specific circumstances. A domain law attorney can help you and your company defend the claim and find the best resolution.
Domain name disputes are highly fact-intensive, especially when trademark rights are asserted. If you are locked in any type of legal dispute over a trademarked domain name, it is crucial that you have a skilled and experienced legal advocate on your side.
We are the Leaders in Domain Name Law
At ESQwire, our domain name dispute lawyer has the professional experience and specialized expertise that you can trust. If you have any questions about what to do if someone is trying to trademark your domain name, we can help. Call us now or contact us online to set up a fully confidential, no-obligation consultation. We are nationally recognized leaders in domain name law.