Internet domain names are at the center of many legal battles. Fully understanding how someone can use a trademark as or part of a domain name is imperative for anyone running a business with a webpage.
A trademark is any word, name, symbol, or combination of those things that distinguishes a source of a business’s services or products offered to the general public. When dealing with internet-related issues, the confusion usually arises when a domain name, which incorporates someone else’s trademark, misleads those who are searching for a particular business, product or service. This is especially true when two businesses offer the same or similar type of good or service.
If you are the owner of a registered trademark and someone has incorporated it in a domain name without your permission, then you may want to consider commencing a Uniform Domain Resolution Proceeding (UDRP). A typical UDRP deals with the designation in the middle of the sequence, e.g. www.AAA.com; hence the American Automotive Association might file a UDRP against someone who registered AAA.com, regardless of any host name in the address.
In a UDRP, there are three (3 possible results: no change; domain cancelled; or domain transferred to the Complainant. In the case of domain cancelled, either party can reapply to register the domain and the one who does so first is the owner.
There are multiple forums for a UDRP, including the federal district courts and the World Intellectual Property Organization (WIPO). Proceedings before WIPO tend to be more streamlined, faster, and less expensive.
If you have questions about the use or misuse of a trademark as a domain name, speak with an experienced intellectual property attorney to get answers.