Can a Domain Name Infringe on a Trademark?

If you have noticed a domain name that is strikingly similar to your registered trademark, there is standardized legal recourse available for dealing with this domain name issue. The Internet Corporation for Assigned Names and Numbers (ICANN) organizes and coordinates domain name registration internationally. ICANN implemented the Uniform Domain-Name Dispute-Resolution Policy, also known as “the Policy,” to deal with trademark dilemmas common in the Wild West days of early internet usage in which individuals registered intentionally infringing domain names.

Do People Register Domain Names in Bad Faith?

According to the Policy, those who choose to infringe upon a registered trademark with a domain name can be held accountable if ICANN finds them acting in bad faith. Registering a domain name in bad faith may occur with the following motivations:

  • For the primary purpose of selling it back to the trademark holder for significantly more than it costs to maintain
  • To prevent the trademark owner from using their mark as a domain name
  • To interfere with the trademark owner’s business
  • To use consumer confusion to attract internet users to the infringing party’s site for commercial gain

What Happens in a Bad Faith Domain Name Case?

After identifying an infringing domain name, the owner of the mark issues a complaint to ICANN, which then arranges a hearing on the mater. The most common remedies offered in ICANN hearing include the cancellation of the domain name or transferring the domain name ownership to the owner of the registered trademark.

Bear in mind, the ICANN hearing does not take the place of a lawsuit. If you feel that the infringing party reaped unlawful profits at your expense, then you may have the ability to seek legal recourse in addition to the ICANN remedy. If ICANN receives word of a lawsuit within ten days of the hearing, the remedy is suspended and the decision of the court takes precedence over the ICANN hearing.

It is important to search the internet frequently for domain names similar to your registered trademark. Parasitic organizations can reap great profits at your expense by directing confused internet users to their products and services.

I Need Help Recovering Lost Profits from an Infringing Domain Name

Note that ICANN’s legal powers are very limited; they can transfer domain name ownership but cannot recover the profits gained by the infringing party. You worked hard to develop a trademark and build its reputation. As such, if you need to pursue legal action against the owner of an infringing domain name, calling an experienced intellectual property lawyer may be in your best interest.

The New Jersey-based Garland & Mason, L.L.C. legal team can accurately calculate the profits that were generated at the expense of your brand’s reputation and can secure a remedy to ensure that your trademarks are protected in the future. The institutions regulating intellectual property on the internet have limited authority and are incapable of pursing the kind of punitive action necessary to ward off future trademark infringement cases. If you need the services of an aggressive intellectual property lawyer, get in touch with us today; we look forward to speaking with you.



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