Trademarks arise from using words, logos, and the like in connection with selling goods and services. Most registrars award domain names on a first come first served basis and do not undertake a complete trademark search for each proposed registration. Consequently, significant legal issues involving trademark or trade name conflicts can arise from registration of a domain name.
Similar, even identical, word marks can be simultaneously registered as trademarks by unrelated businesses on unrelated goods. For example, “Delta” is a trademark for airline services, water faucets, and other businesses. The problem of overlap is increased when non-registered marks are considered, since identical unregistered marks can be used in distinct geographical regions of the country for decades, even on the same goods and services, without any problems arising. Also, logo designs can distinguish marks whose words alone are similar or identical. Trade names, which are outside the scope of federal registration but may be registered as corporate names on a state-by-state basis, are another source of overlap.
In contrast, only one party can register a given domain name. Thus, while Delta Airlines and Delta Faucets can coexist, only one can lay claim to the desirable delta.com domain name. This problem is particularly prevalent in the “com” domain, since anyone may register an available “com” domain name, regardless of the type of goods, services or the part of the country in which any trademark or trade name is used. Indeed, a party may register an available “com” domain name even if no goods or services are associated with the term. Moreover, the problem of overlap is exacerbated because domain names are often shortened versions of trademarks or trade names, including abbreviations, and initials.
The following conflicts may arise:
- Two businesses have legitimately used the same name or mark on different products or services, and both want to use it as a domain name.
- Two businesses in different parts of the country or the world have similar marks or names and want to use the same word or phrase as a domain name.
- Two businesses with different marks or names seek similar names because one (or both) seeks to shorten its mark in a way which makes the domain name similar or identical.
- An unscrupulous competitor or third party (a “pirate”) anticipate your desire for a particular domain name and obtains it first. This process of registering a domain name with the purpose of selling it to a trademark holder or simply to the highest bidder is commonly termed “cybersquatting.”
In order to sort out the difficulties that arise from the conflict between the first come, first served registration system for domain names and the multiple user structure of trademark law, ICANN has enacted a dispute resolution policy that applies to all domain names. You can review this policy at http://archive.icann.org/en/udrp/udrp-policy-24oct99.htm. These guidelines, which become part of the agreement entered into upon registration of a domain name, indicate that it is the domain name registrant (as opposed to the registrar or registry) who has legal responsibility to determine whether a given domain name infringes someone else’s rights. The domain name registrant indemnifies registrars against any such liability.