By
Shelley Lowery
I recently received an email from a concerned, fellow Internet
business owner, asking for my opinion on an issue that could
literally destroy his Internet business and the business of
several other domains involved.
He had received legal notice from a prominent company, stating
that he needed to relinquish his use and rights to his web
site domain name because it contained three letters that infringed
upon their trademark and their domain name. This same company
also contacted several other Internet business owners and
made similar demands.
Should a company that registers a specific trademark have
the ability to destroy numerous businesses that legitimately
registered domain names? Should a company that registers a
trademark have the responsibility of ensuring that a domain
name registration agency doesn't issue domain names that may
be a trademark infringement? Or should an Internet business
have the responsibility of making sure a potential name doesn't
Infringe upon a registered trademark? Where does the responsibility
lie?
Ultimately, the responsibility lies with the domain name registrant,
as the trademark laws that apply in the hard copy world also
apply on the Internet.
Any company that registers a trademark has the right to protect
their trademark and has the right to notify you that your
domain name is infringing upon their trademark. Why? If your
domain name has the potential of confusing the public into
thinking the trademark holder is somehow affiliated with your
web site, they may bring infringement claims against you.
The courts would have to make the decision based upon the
trademark laws and if your domain name, in fact, has the potential
of confusing the public.
Domain name registrants can protect themselves as well. If
you have a registered domain name that doesn't infringe upon
any trademarks, you too may be able to register a trademark.
Registering a domain name as a trademark isn't easy, but it
can be done. Although you can't register the http://www.or
the .com, if the use of your name fits the laws criteria,
it can be registered. You should consult with an attorney
familiar with the Internet, trademarks and the laws prior
to registering your domain name as a trademark.
For a complete explanation, visit:
http://www.uspto.gov/web/offices/tac/notices/guide299.htm
As stated by the United States Patent and Trademark Office,
http://www.uspto.gov/ "A mark composed of a domain name is
registerable as a trademark or service mark only if it functions
as a source identifier. The mark as depicted on the specimens
must be presented in a manner that will be perceived by potential
purchasers as indicating source and not as merely an informational
indication of the domain name address used to access a web
site." In other words, the use of a domain name must not be
used simply as an address to direct customers to your web
site, but must be used to identify the products or services
of the business claiming the trademark, which provides products
or services via the Internet.
If you're in the market for a domain name, you may want to
consider searching the Trademark Electronic Search System,
http://tess.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk
prior to registering a domain name. By researching the trademark
regulations and knowing your rights, whether you hold a trademark
or a domain name, you may be able to avoid the possibility
of litigation.
About the Author
Shelley Lowery is the Webmistress of Web Source - Your Guide
to Professional Website Design and Development. Join The Syndicator,
our new, free article syndication program and display complete
articles w/photographs on your website that are automatically
updated each week. http://www.web-source.net
|