Although each situation is very unique, there are some tips to remember when registering
your domain name or before deciding to enter into a legal conflict over a domain name.
Please consult an attorney who specializes in intellectual property before taking any
action.
What is Trademark?
A name that clearly identifies a product or service in a particular market usually qualifies
as a trademark. For example, Coca-Cola.com clearly identifies a specific product (Coke) in a
specific market (consumer beverages). If a dispute ever arose over the ownership of Coca-Cola.com,
there would be no case, Coca-Cola would have it hands down.
Claiming Your Trademark as Domain Name
Usually if your business name is very distinctive, you can also lay claim to the associated
domain name (if you have trademarked the name of your business). For example, if Joe decided
to name his business Joe Smith Tools of Alabama, he would probably have no problem staking
claim to JoeSmithToolsofAlambama.com.
Usually, the first person who uses a name will get to keep ownership of it in case of a conflict.
So if Joe has been using JoesTools for 20 years, he has a good chance of retaining ownership to
the trademark if someone else comes along claiming they would like to start using it.
And as it was mentioned earlier, if the conflict over a name could create customer confusion
in the marketplace, some sort of infringement probably exists and only person will be able to
use that name.
Case Examples
Here are two example domain name disputes and their outcomes:
The Dirty Word
A fashion retailer called French Connection, launched a huge marketing campaign titled French
Connection United Kingdom and in their creative ad materials, shortened the campaign to FCUK.
They also registered FCUK as a trademark but did not register FCUK.com. Two months later,
an internet consultant did register the domain name. French Connection brought suit against
the consultant claiming that the consultant was infringing on their trademark. They also cited
example cases where companies were being granted use of domain names registered by others.
However, the consultant argued that:
1) 'FCUK' was a well known alternative to the swear word on the internet,
2) It was a way of getting round censorship filters on certain internet providers.
3) It was well known the term meant a web site had pornography.
The judge ruled in the consultant's favor claiming that French Connection had not proven
that any confusion would exist in their marketplace as a result of not using the name,
and had also not proven that there were any remote similarities between French Connection's
business and the intended business of the internet consultant.
"Iran" out of Ideas
Another interesting case was between a company called the Britannia Building Society and
someone who had registered BritanniaBuildingSociety.com. Britannia had the trademark for
the name but not the domain name. They sued and asked the judge for a summary ruling so
that a long drawn out legal battle could be avoided. Britannia's main argument was that
the individual who had registered the domain name was not using it and clearly was
"squatting" on the domain to use it fraudulently to make money. The individual who had
the domain name argued that he intended to build a business supply British building workers
to employers in Iran. The judge was not impressed with the defense and Britannia won the
case.
Conclusion
Disputes over trademarks and domain names are extremely tricky. Be prepared to shell out
big bucks if you wish to fight over a domain name. Never take any chances without
consulting an attorney who specializes in intellectual property cases.
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