DOMAIN NAMES AND TRADEMARKS: An Update

IVAN HOFFMAN, B.A., J.D.


        As of October, 2001, there will be a new top level domain (TLD) available: .biz.  There are other TLDs coming so the issues raised in this article and the articles cited will likely apply to those other TLDs as well.  However, because the .biz TLD is limited to uses by businesses, it is likely that any infringement of a trademark owner’s rights will come from this TLD.

The Additional Burdens

        As a result of these new TLDs, trademark owners, including both registered and  common law trademark owners, face the same issues regarding domain name “cybersquatters” as with the .com domains.  These issues surround the rights of these intellectual property owners in relationship to the rights of domain name registrants.  Instead of repeating all the legal questions involved here, there are a number of articles on my site under the link “Articles About Trademarks and Domain Names” that you should read in this regard including specifically “Domain Name Disputes: An Update” and “Legitimate Interests in Domain Name Disputes.”

        Since the law requires trademark owners to enforce their rights in their marks, to allow another party to use your claimed mark in a manner that might be considered an infringement and not take legal action to stop such use may result in the loss of the rights of trademark.  With these new TLDs, there is an additional burden placed on the trademark owner to enforce these rights as to any domains that are registered using the .biz extension.

Remedies

        In sum, under the Uniform Domain Dispute Resolution Policy (UDRP) and the AntiCybersquatting Consumer Protection Act (ACPA), if you are a trademark owner or have rights in trademark, you may be able to obtain the infringing domain back or block its usage.   If you have rights in trademark, meaning that you have common law rights or have rights that otherwise give you what are referred to as “secondary meaning” to your claimed mark, you may be able to proceed to protect your rights against a domain registrant that is using your mark or one confusingly similar in a manner that creates a likelihood of confusion in site visitors as to source or origin.  Read “Julia, Jimi and Cybersquatting.”

        Your rights are limited to the use of your mark in what is called the secondary level domain, meaning that part of a domain that comes before the .biz (or .com, .net etc.).  Thus if someone is using your mark in a manner that infringes on your rights, it does not matter which of the TLDs they are using.  If you are using a name that you consider a trademark, whether or not registered and whether or not you are using it with a .com or other current extension, you should seriously consider registering the mark with a .biz extension as well.  While you may prevail by filing a UDRP arbitration or ACPA federal action, by preemptively registering the new extension, you may save yourself some considerable time and money in legal fees.

Register Your Marks!

And if you claim rights in a mark but have not registered your mark as a trademark, then you should do this immediately as well.  Rights in trademark are considerably stronger with registration.

© 2001 Ivan Hoffman

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This article is not intended as a substitute for legal advice.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  You should consult with an attorney familiar with the issues and the laws.
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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

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