January/February 2005
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Making a Domain Name Qualify as a Trademark?
The confusion between domain names and trademarks continues. For the purpose of this article, “trademark” refers to both trademarks, which identify goods, and service marks, which identify services.
Far too often, it is assumed that obtaining a domain name is all that needs to be done to have a right to use a name or word to identify a product.. However, obtaining a domain name is not the same thing as registering a trademark. Such a misunderstanding can be and often is costly.
A domain name is nothing more than a designation issued by an authorized registrar, to use a unique address on the Internet. The registrar does not check to determine whether there is a conflicting trademark already in use, before issuing a domain name. Some domain name registrars actively mislead clients into thinking they are receiving a protected domain name. The registrar’s only duty is to assure that the domain name is unique to the Internet. The registrar does not even consider other uses, other than assuring that there is no other identical domain name.
For instance, the registrar will easily grant anyone the domain name “Exxon.edu” or “Exxon.ss”, if it has not already been granted to Exxon or someone else. Whether the applicant has any relation to Exxon or not is not an important issue to the registrar. It is not the registrar’s job to determine whether granting such a domain name may be a trademark violation. An even more difficult situation arises with regard to a domain name which uses a similar, but not identical designation, such as “Exon.com.”
That is why, before using a domain name, it is important to do a simple online trademark search, at the very least. This can be done at the Patent and Trademark Office web site. Unfortunately, an online search misses a lot of material, including all state registered trademarks and any common law trademarks. It is also likely that an online search, unless done by someone skilled in the art of searching trademarks, will be more likely to miss similar, but not identical marks, which do not cause a domain name conflict, but may cause a trademark conflict. In trademark law, it is not necessary that a domain name or trademark be identical to infringe a prior trademark.
The last thing a web site operator wants is to invest time, effort and resources into building the recognition of a domain name, only to receive a cease and desist letter from the earlier owner of a similar trademark. Caution at the outset will go a long way to preventing this all too common occurrence.
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