Have you ever found a great keyword phrase that happens to include a registered trademark? Perhaps you’ve done a quick domain check and the ideal domain name for this phrase is available. In this post I look at some of the risks in registering a trademarked domain name and what we can do to reduce them.
What is a Trademarked Domain Name?
When I refer to a ‘trademarked domain name‘ I mean a domain name that contains a word that has been trademarked, as either part or all of the domain name. For example if we find that the word ‘facebook’ is a registered trademark (which it is), then the following domain names would all be trademarked domain names under my definition:
- facebook.com (the official facebook)
To find out if a particular word is trademarked, you’ll need to search the particular trademark registers in each country:
- To search the US Patent and Trademark Office, click here
- To search the UK Intellectual Property Office, click here
- To search IP Australia, click here
What are the Risks in Using a Trademarked Domain Name?
Using a trademarked domain name risks a number of possible unpleasant consequences if done incorrectly, including:
- loss of the domain (especially if just cybersquatting);
- loss of any work put in to building a site on that domain; and
- possibly even a financial claim for breach of trademark.
The most obvious way to avoid the risks associated with using a trademarked domain name is to ensure that when registering a domain name it doesn’t contain a trademark. But what if we really want to use a trademarked domain name, but also minimise the associated risks?
Now this gets a bit techincal – hence why alot of sources suggest consulting a trademark attorney. But the key point will be to ensure that using a domain name won’t breach the trademarked associated with a word in the domain name. To explain this point a bit more, it is necessary to know a bit more about how trademark law works.
What is Trademark Infringement?
The law relating to trademarks will vary by country. As an example, here is a general overview of US trademark law according to the Overview of Trademark Law provided by Harvard Law School and guidelines provided by the US Patent and Trademark Office (not by me):
- A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another (eg Apple computers);
- the use of a trademark in connection with goods constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods;
- the owners of a particular trademark can sue people who infringe that trademark;
- owners of trademarks can also bring an action for trademark ‘dilution’ if the use of the mark diminishes a sufficiently famous trademark, even though it may not cause confusion to a consumer;
- a claim for dilution can be made:
- if the use of the mark weakens the trademark through its identification with dissimilar goods (known as ‘blurring’ eg Kodak bicycles); or
- if it tarnishes the trademark by associating it with inferior goods (eg Toys-R-Us vs adultsrus.com);
- in some circumstances it will be okay to use a trademark where:
- a particular product or service can’t be identified without it (eg using the phrase New Kids On The Block to refer to that particular band); and
- there is no suggestion of endorsement.
How Can We Minimise the Risks?
What we can take from this is that if we want to stay out of trouble when using trademarked domain names we should, at a minimum:
- make sure the use of the trademarked word in the domain name or on the website won’t cause confusion;
- specifically avoid any uses of the trademark in the domain name or on the website that might come across as some sort of endorsement;
- have a disclaimer indicating that the website is in no way affiliated with or endorsed by the company owning the trademark;
- make sure the website has a legitimate reason for referring to that trademark;
- see if other websites are making similar references to the same trademark.
What this all means is that before charging ahead (and either paying big dollars for a trademarked domain name or spending lots of effort building a website on one), it is important to:
- do the necessary due diligence first;
- fully consider the trademark law for the jurisdiction in question; and
- figure out how the law applies to your circumstances (and seek legal advice if in doubt).
There will always be some risk in using trademarked domain names, but following the above steps should help reduce the exposure.
© Tom McEwin