3 common questions and answers about domains and trademarks
As more and more businesses, shops and transactions move over to the internet, the threat to trademark holders becomes bigger and more complex. In this blogpost we address three common questions associated with domains and trademark infringement, and outline the possible actions available to you if you are affected.
When can a domain registration by third parties be considered an infringement of my trademarks?
That depends on many different factors, not least the top-level domain involved. Different top-level domains have different rules and procedures.
For .se domains the most relevant legal tool is the alternative litigation process (ATF), whereas .com domains are bound by the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Both these procedures use the same criteria to determine trademark infringement. Most notably, they lay out three prerequisites that must be met for the registration of a domain name to be classified as trademark infringement.
- First and foremost, the domain name has to be identical or confusingly similar to the registered trademark.
- Furthermore, trademark infringement will only be recognized in circumstances where the domain name holder has no rights or legitimate interest in respect of that domain name. Legitimate interest can mean, for example, that the domain holder runs a business with a similar trademark but in a different industry or another country.
- Finally there needs to be evidence that the domain user has acted in bad faith. This often means that it must be shown that the domain holder has used the domain with the intention of making money by using the trademark in question.
For both ATF and UDRP, there is always a detailed assessment for every individual case, and these three prerequisites must be met for a complainant to have a chance of legal success.
I have identified a domain registration that infringes on my trademark, what should I do?
Always begin by analyzing the specific situation. Often, your options are to either go down the legal route or to buy the loose domain name from the owner. If the domain registration meets the prerequisites for, for example, alternative litigation, then this would be an option. However, if the legal action is unlikely to succeed, the next step will likely be opening negotiation with the holder of the domain name. Before you do this, you should always ensure that you own all other relevant domain names, to avoid the risk of the person on the other side of the table registering more domains and strengthening their position.
What steps can I take to pro-actively avoid trademark infringement via domain registration?
Begin with ensuring that your company has a strategy and a policy for dealing with domain names that are important to your business and that therefore require attention, including domains with common misspellings of your trademark. The strategy should also look to the future, by outlining procedure for launching new trademarks and expanding into new markets.
Ensure too that you actually own the domains that you have identified as important – those that you currently use, those that you may use in the future and/or those that could preemptively protect your company and trademarks. Once you have these in place, domain monitoring is a cost-effective next step. Monitoring alerts you if someone registers a domain name that is based on your trademark. It helps you to react quickly, hopefully before any damage is done.