Trademarks, Domain Names & Cybersquatting

March 9th, 2020

Like peanut butter and jelly, trademarks, domain names and cybersquatting all go together.  Every analysis begins with  trademark rights.  I order to make a claim for cybersquatting, and you have to have trademark rights in a word or phrase.  If that word or phrase is also a domain name, you can protect the domain name using your trademark rights.

Trademark Rights & Confusion

A trademark or service mark is generally a word, phrase, symbol, or design, or a combination, associated with a company, goods or services that identifies and distinguishes the source of the goods or services from third parties, including competitors.  A service mark is related to the source of a service rather, than a source identifier for goods.

When comparing the rights of two companies to a mark, the key test is a “likelihood of confusion” between the marks.  The likelihood of confusion is more likely to be an issue when the competing marks are similar, and the goods and/or services between the two competing users are related.  Any variations of words or letters that create a likelihood of confusion will result in a contest on trademark rights. the first to use the mark in commerce typically wins, even if the mark is not registered with the USPTO.  Further,  two identical marks can coexist, so long as the goods and services are not related.

Trademark Issues & Domain Name Use

Domain names are not necessarily trademark protected.  A trademark identifies goods or services as being from a particular source. Registration of a domain name does not create trademark rights. If the domain name is an identifier of source, and meets the tests for non-domain name trademarks, or matches your trademark, then you can protect it,.

Cybersquatting Domain Names

Cybersquatting is the registration of a domain name with a bad faith intent to profit from and existing trademark owner related to that owner’s pre-existing trademark rights. Cybersquatting can also occur when you ‘use’ or change use of a domain name or website hosted on a domain name, if the change in use starts to create a likelihood of confusion. Finally, trying to sell a domain name which is confusingly similar to a trademark owner can be powerful evidence of bad faith intent to profit.