Domain names exist solely on the Internet. They are primarily functional elements. Trademarks exist in actual as well as virtual marketplaces. They, too, are functional when they act as domain names, but they have an additional dimension. And therein lie opportunities for infringement of rights and deceptions, popularly known as cybersquatting or cyberpiracy.
While this article will soon enter the weeds of cybersquatter situations, marketers may first want to take a look at these takeaways that are listed again later:
- When deciding on a trademark, always make sure the domain name is available first;
- When deciding on a domain name, always make sure the trademark is available.
- It is not sufficient to allege cybersquatting; it has to be proved, which requires evidence the trademark owner actually has a right, that the domain name holder lacks either right or legitimate interest in the domain name, and has registered and is using it in bad faith; but
- Where domain names are unlawful, the registrations can either be cancelled or transferred to the trademark owner by using an online dispute resolution procedure known as the Uniform Domain Name Dispute Resolution Policy that the Internet Corporation for Names and Numbers implemented in 1999.
Marketers who want more detail may want to know the following:
Whereas domain names are essentially denotative and can belong in no other medium, trademarks are essentially connotative as identifiers of sources and qualities of goods and services, which is the basis for their great power to attract consumers and why they are attractive for cybersquatters eager to take advantage of their established good will and reputation.
These infringements and deceptions have opened up a whole new apparatus of legal proceedings. It would ill-advised to ignore the legal tools for protecting valuable rights. In the majority of cases, claims of infringement by domain names favor trademark owners because most choices of identical or confusingly similar domain names to trademarks are indefensible.
Gerald M. Levine is an intellectual property and Internet attorney; he is the author of “Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting.” Reach him at email@example.com.