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Trademarks vs. Domain Names, Part I: There is a BIG Difference

People frequently talk about their trademarks and domain names as if they are interchangeable. Be careful; they’re not! Domain names are used to access the Internet, a server computer hosting a website or the actual website. Typically, domain names include the name of the business, or a product or service provided by the business. 

Trademarks serve a distinctly different purpose and function. Trademarks are words, phrases, symbols, designs or combinations of these that identify and distinguish the source or producer of certain goods or services of one party from those of another party. Trademark infringement occurs when a trademark from one party or the use of the trademark by a party causes confusion to the consumer as to the products or services being offered, or the source of the products or services being offered.

Can a domain name also be a trademark? Yes. However, it’s not easy to do. In order to register a domain name with the United States Patent and Trademark Office (USPTO), the user will need to show that the domain name functions as a trademark. An example of a domain name that is also a trademark is GODADDY.com®.

A prudent step when choosing a domain name is to check the trademark database of the USPTO before buying the domain name. Searching the database allows the business owner to view all registered, pending or “dead” trademarks. When performing the search, look for the proposed domain name and variant spellings, misspellings, synonyms and similar-sounding names. If the search turns up possible similar names, then several questions should be asked. 

  • Will your website offer similar goods or services as those for the found trademark? 
  • Will you be selling your goods or services through the same or similar channels of trade or distribution chains as the found trademark?
  • Is the name found very well-known?
  • How similar is your proposed domain name to the registered trademark, and how likely is it that a user may end up on your website by mistake?

If you answer no to all of these questions, then you should feel comfortable buying the domain name. Any yes answers should lead you to seek legal advice before moving forward.

What are your options if the domain name you want is already taken? The easiest thing is to change the name; however, be careful that you don’t inadvertently infringe another’s trademark with the change. Another option is to register the name under a different top-level domain, such as .net, .biz or org. Again, be careful pursing this option because only changing the suffix may not avoid an allegation of trademark infringement if the mark and name are close. Finally, it is common practice for domain names to be bought and sold on a regular basis. The option of buying a domain name can be pursued like any other purchase of property. 

What happens if there is a dispute over the use of your domain name, or if someone is using your trademark as a domain name? It’s tempting to lump both under the heading “cybersquatting,” but they are not. Cybersquatting is the act of registering, selling or using a domain name with the intent to profit from the goodwill of someone else’s trademark or name. 

Disputes over the use of domain names may be initiated by a domain name bully. These are usually larger companies that threaten smaller companies or individuals into giving up a domain name that they believe infringes their trademark or product name. Many times, such allegations are baseless. These inappropriate threats of trademark infringement can be combated using the legal pathways discussed in detail below.

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