Domain names aren't protected by trademarks and other myths

At New Media Rights we often get questions about domain names and trademarks. Many of these questions are the result of some deeply held myths about the use of trademarks in domain names. In this blog we’ll explore & debunk some of these key myths.

Myth: Domain names can’t be protected by trademark law.
Truth: Domains containing trademarks can be protected by trademark law.
This is one of the biggest myths related to trademarks and domain names, and is a byproduct of the complicated history of the protection of domain names. In the early days of the internet, it was a common practice for individuals to buy up top level domains (like .com or .org) of existing trademarked brands or slight misspellings of those brands. Not only was it an easy way to bring in advertising revenue, but many individuals were successful in selling those domains back to major brands at a hefty profit. Some also used it as a way to disrupt a competitors business.  Understandably, this made owners of major brands very upset. To these brands it seemed wrong that someone could profit off a domain using their trademark. But in the early 90’s it wasn’t exactly clear how trademark law or the law in general could be used to stop this behavior.

As a result a number of laws were passed to remedy the situation, the most prominent of which is the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d). This law essentially prohibits buying a URL with the bad faith intent to profit off someone else’s trademark.  For example buying cocacola.exposed with the hope of selling the domain to coke to make a profit would be an example of cybersquatting not permitted under the act.

In addition to the ACPA, The Uniform Domain-Name Dispute-Resolution Policy (UDRP) run by ICANN is another out of court arbitration process that can be used to resolve disputes about cybersquatting. Although not identical, the standard’s for what Cybersquatting is in a UDRP action is very similar.

Myth: Domain names are protected by copyright law.
Truth: Domain names are not protected by copyright law for more information on why check out our copyright FAQ "Is a domain name subject to copyright law?"

Myth: There are absolutely no circumstances where you can use a company’s trademark in a domain
Truth: There are a few, relatively narrow, exceptions that could allow you to use someone else’s trademark in your domain.

 

• First Amendment: Using the trademark in the domain of another company to parody, satirize or otherwise express opinions about a company will likely be protected by the first amendment.  Taking the example used above let say you wanted to buy cocacola.exposed but instead of selling it, you wanted to develop a website that discussed the potential health risks related to drinking coca-cola and other drinks produced by the company. That use would likely be protected under the first amendment particularly if the website was also non-commercial.
• Descriptive: The descriptive use defense comes into play when using a trademark for its plain English meaning.  For example registering Marlins.com for a site all about fishing for marlins would be using the word marlin for its plain English meaning.  Although the Miami Marlins have a trademark on “Miami Marlins”, trademark descriptive use would allow for the registration and use of Marlins on a site all about the fish.
• Nominative Use: The Nominative use defense comes into play when: (1)The product or service being identified can’t be readily identified without its trademark; (2)The usage of the trademark is limited to what is needed to identify it; and (3)No sponsorship is implied by using the mark. Because meeting all of these factors in a URL is challenging this defense comes up less often but is still possible. For example, let’s say a shoe shop at the URL www.shoes4u.com had a page where they listed all of the Nike shoes they have for sale located at www.shoes4u.com/Nike. Provided there was nothing on the page itself implying Nike’s endorsement  this would likely be considered normative use because Nike shoes cannot be identified without their trademark , the use is limited to what is necessary to identify the shoes as Nike shoes and no sponsorship is implied by using Nike.

Trademark law and cybersquatting are complicated issues and best discussed on a case-by-case basis. If someone has stolen your domain name, someone has accused you of misusing their trademark in your domain name, or you’re unsure whether or not you’re cybersquatting please consider reaching out to an attorney for assistance.