October 19, 2020

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Registered Trademark vs Domain Name

A reader submitted a comment asking about the comparative rights of holders of registered trademarks versus the rights of domain name registrants.  Since this is an issue I come across frequently, I thought it would be interesting to discuss.  The reader’s comment (below) was submitted in response to my article entitled “They’re Using My Trademark On Their Out-Of-State Website, Can I Sue Them In My State?.”

“I have been running an active blog for the past six years, and now, I suddenly receive a notice from an IT company in Australia (dealing in both hardware & software) stating that they have just, last month, registered the trademark in the exact same name, and requesting me to stop “commercial activities” from my blog. Furthermore, they claim that they also own the .COM version of the domain name which was registered a year before mine, which is .NET. This is clearly not a “Cease & Desist” letter, and no demand has been made to hand over the domain registration. Like I said, mine is purely a blog, although I do receive ad revenue, have a “Donate” button from PayPal, and occasionally offer some free software downloads.  Where do I stand, and what should I do?”

Figuring out how best to address these situations is almost always about gathering good facts first.  Unfortunately, we’re missing too many facts here to give any advice.  But, we can point out some of the facts that might be key to addressing the issues.

From the subject matter of the article the reader was responding to, I’m guessing that the reader is located in the US.

In order for the Australian company to force the reader to surrender the domain name, it would have to get a court order or succeed in a Mandatory Administrative Proceeding (MAP)  under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP).  As long as the blog is being operated in good faith, it is unlikely that the Australian company would succeed in a UDRP MAP proceeding.  Under the UDRP, in order for a claimant to succeed in getting a domain name turned over, the claimant must prove that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.  See UDRP §4(a).

I’ve emphasized the words “and” here for a reason.  Under the UDRP the Australian company would have to prove all three elements.  Even if the reader’s domain name is identical to the Australian company’s registered trademark (let’s assume that the .COM and .NET elements are not a protected part of the trademark), the company would still have to prove that the reader had no legitimate interest in the domain name and that it was registered and used in bad faith.  If the blog was started six years ago, it doesn’t sound like it was started in bad faith.  Accordingly, it seems unlikely that the Australian company would be would be successful in pursuing a UDRP proceeding.

As a result, the only other possibility would be for the Australian company to obtain a court order.  Whether a court order could be obtained, at least in the US, would be a function of whether the blog name infringed or diluted the Australian company’s trademark.  Since we don’t know the mark or the name of the blog and we don’t know the goods/services covered by the mark or the subject matter of the blog it’s impossible to evaluate.

In the US, however, if the Australian company’s mark was registered in the US, the company would still have to prove that the domain name of the blog was likely to cause confusion.  If the trademark was registered for computer hardware and software, but the blog was about cooking, it is unlikely that this would cause confusion in the relevant market.  For example, I would hardly expect Apple, Inc. to have a problem with the “Little Apple Cooking” blog (btw – the Thanksgiving Corn Pudding looks wonderful).  If, however, the Australian company’s mark was registered for online publications about computer hardware and software and the reader’s blog covered the same subject matter, that might be a different story.  In that case, we would have look at who started using the mark first since, in the US, trademark rights are (generally) based on use, not on registration.

© 2020 Giordano, Halleran & Ciesla, P.C. All Rights Reserved National Law Review, Volume VIII, Number 108


About this Author

Kurt E. Anderson, Intellectual Property Attorney, Giordano Law Firm, Intellectual Property & Technology Corporate,Business and Banking,Business Law, Trademark and Copyright Law, Licensing, Commercial Lending

Kurt's practice focuses on technology and intellectual property. He counsels clients in the following areas: 

  • Licensing and US and international transactional matters (e.g., development agreements, supply and distribution agreements, independent contractor agreements and professional service agreements) in a variety of industries including software, SaaS, open source, pharmaceutical and consumer goods.

  • Trademark and copyright registration and enforcement.

  • Trade secret protection and enforcement.

In the area of business...

Melissa V. Skrocki, Giordano Law Firm, Business Attorney

Melissa focuses her practice on counseling business clients through various transactions with an emphasis on intellectual property issues. Melissa's business law practice includes the representation of clients in contract negotiations, confidentiality agreements, organization and formation of business entities, mergers and acquisitions, shareholder licensure agreements, operating agreements and licensing agreements. Melissa assists women and minority owned business clients with state and federal MWBE certification and renewal.

In connection with the firm's Intellectual Property and Technology practice, Melissa advises clients with regard to state, federal and international trademark matters such as availability searches, registrations and maintenance of trademarks. She also counsels clients with regard to domain name disputes, privacy and use policies and other Internet related matters. She is also well versed in the intricacies of federal copyright law and intellectual property licensing agreements.

In the area of Renewable Energy, Melissa represents clients in the sale of ownership interests in renewable energy companies, negotiates commercial financing with SREC secured interests and preparation of operating agreements. She also negotiates co-generation agreements for her clients. 

Christopher J. Marino Litigation Attorney Giordano Halleran Ciesla

Chris has a bi-coastal litigation practice focusing on general commercial and business disputes, trademark law, copyright law, trade secret law and unfair business practices, and entertainment and media law. He has extensive experience litigating and resolving general commercial and intellectual property disputes, and also provides transactional and business counseling in the areas of copyright, trademark, trade secret, unfair competition and business practices, and general commercial law. Chris also has experience serving as outside general counsel, advising clients in the area of...