Legal Bytes: Domain Names and Trademark Issues
     By John Brewer - March 2006

             Many individuals and companies own domain names.  However, many new registrants for domain names fail to consider the implications of trademark law when registering a domain name.  Trademarks are registered at the federal level by the Office of US Patents and Trademarks (USPTO).  Federal registration gives legal protection to the registrant against certain uses of the trademark within the market place.  Readers of this article are cautioned that trademark law is a complicated legal matter and this article is general in nature.

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.  In short, a trademark is a brand name.  In addition, there are service marks and collective marks.  There are a number of benefits to registering a trademark with USPTO:  1)  constructive notice nationwide of the trademark owner's claim, 2)  evidence of ownership of the trademark, 3)  jurisdiction of federal courts may be invoked, 4)  registration can be used as a basis for obtaining registration in foreign countries, and 5)  registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

There are a number of “classes” specified by the trademark/servicemark system.  When one registers a mark, the application must specify the class in which the mark is being registered.

A problem can arise if the domain name “infringes” upon a mark that has legal priority.  For example, suppose one registers the following domain name (assuming it is available):  www.mackdonalds.com .  MacDonalds is a federally registered trademark.  Suppose mackdonalds.com is a hamburger restaurant.  It is possible that confusion can result within the public between Mackdonalds and MacDonalds.  Bingo, the improper use of MacDonalds will result in a “cease and desist” letter that will inform the infringer that legal action is imminent unless use of the infringing term is discontinued.  However, use of the term MacDonalds for a hardware store owned by “Oliver MacDonald” might be permissible since confusion is less likely by the public.

Courts generally look to certain legal “elements” to determine if the likelihood of confusion exists.  These elements can be summarized as:  1)  the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings);  2)  the similarities of the goods and services involved (including an examination of the marketing channels for the goods);  3)  the strength of the plaintiff's mark;  4)  any evidence of actual confusion by consumers;  5)  the intent of the defendant in adopting its mark;  6)  the physical proximity of the goods in the retail marketplace;  7)  the degree of care likely to be exercised by the consumer; and 8)  the likelihood of expansion of the product lines.

If the infringement results in actual litigation, and if the plaintiff is successful, remedies can vary depending on whether the trademark was registered.  The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement.  If the infringed mark was federally registered, attorney’s fees could also be available to a successful plaintiff.  Monetary damages are available under the Lanham Act, but are rarely awarded in trademark lawsuits.

The following is a portion of a “cease and desist” letter sent by the Religious Technology Center to the registrant of a domain name alleging infringement of a federally registered trademark:

“Our office represents Religious Technology Center ("RTC"), the owner of the federally registered trademark and service mark "SCIENTOLOGY".  The "SCIENTOLOGY" mark is registered with the United States Patent and Trademark Office under registration numbers 1,755,441; 1,540,928; 1,342,353; 1,329,474; 1,318,717; 1,306,997; and 0898018.  "SCIENTOLOGY" is also registered as a trade and service mark in numerous countries throughout the world, including New Zealand under registration numbers B 119,381; 153,974; 180,601; B 153,085; B 153,086; 180600.  We also represent the Church of Scientology International ("CSI"), which is the licensee of the "Scientology" trademark.  We have been advised that you have registered a domain name with Enom, Inc., a United States domain registrar and agreed, through Enom's Registration Agreement, Governing Law and Jurisdiction for Disputes, to submit to the jurisdiction of Bellevue, Washington, regarding the following domain name:”

"Scientomogy.info"

In summary, the mark holder is putting the registrant on notice that the domain name is infringing on the registered trademark/servicemark.  The author of this article is not aware whether this matter has been resolved and the contents of this letter are for illustration purposes only.

So, what are the practical issues involved with the registration of a domain name?  Again, the author of this article emphasizes that this topic is complex in character and does not cover the topic in detail.  Readers should also be aware there is a US law known as the Anti-Cybersquatting Act that may apply when the domain name is a protected mark.  The most important issue is that one has to consider trademark issues when registering a domain name.  That means proper legal advice may be necessary if one intends to use the domain name in commerce.

Does this complicate registration of a domain name that is intended for use in commerce?  Unfortunately, it does.  Readers who have this type of issue are advised to consult a specialist in this area or take their chances for the future receipt of a “cease and desist” letter.  The chances for the receipt of such a letter are much better than winning the Powerball Lottery.

John Brewer practices law in Oklahoma City, is a member of the Governor’s and Legislative Task Force for E-Commerce, and enjoys issues relating to eBusiness and cyberspace. Comments and questions are welcome and can be emailed to johnb@jnbrewer.com.

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