Using trademarks in domain names - does it violate trademark laws
Are allowed to use trademarks and brand names of others in our domain names? What are the laws regarding registration of domain names that contain trademarks? Read this article to learn more about the domain name and trademark policies set by ICANN.
There is a misconception that nobody can use someone else's trademark name in a domain name. This is a gray area where nobody can tell a hard and fast rule. The reason is, trademarks are specific to countries and domain names are global. The same mark or name may be trademarked by different companies in different countries and in such cases nobody can state who owns the right for those domain names.ICANN policies regarding domain names and trademarks
ICANN has set a couple of rules for filing a domain dispute against someone:
Here is how I would interpret the above rules:
A company who owns the trademark can't claim a domain from the owner just because it owns the trademarks of the words used in the domain name. It has to prove that the domain owner has no rights for that name, is abusing the trademark and affects the business of the trademark owner.
If you take advantage of a trademark through your domain name and affect the business of the original trademark owner, you may be infringing the trademark owner's rights. For example, if you have a website called "DellComputers.com" and sell competitor products, you may be taking advantage of the Dell brand name to confuse visitors and do business, which affects the business of Dell in some or other way. In such a case, Dell can file a domain dispute against your domain and you may lose the domain name. However, if you own a domain name "DellComputerReviews.com" and write honest reviews of Dell computers, you are doing it in "good faith" and nobody can question your rights on that domain name, provided you add a disclaimer saying "This website is not operated by Dell or associated companies".What is meant by "using in bad faith"?
This is one of the gray areas in the ICANN policies regarding domain disputes. Typically, it means it is used with some bad intentions like taking advantage of the trademark and confuse or mislead people or affect the business of the trademark owner. As long as you are doing the business legally, with absolutely no place for confusion or misleading your visitors and you clearly state the nature of your business, you can claim you are doing it in "good faith".
Possible violations of "good faith":
- If you registered the domain name with the intention of selling it to the trademark owner, it will be considered doing it in "bad faith". If you have a history of selling such domains to the trademark owner, you may lose a domain dispute.
- If you registered the domain name with the intention of stopping the trademark owner from acquiring it, that also will be considered as an act in bad faith.
- If you acquired the domain name to disrupt the business of the domain owner in any manner, it may be considered as "bad faith".
- If you are making commercial gain from the domain name by creating confusion or likelihood with the trademark, then it could be considered as an act of bad faith.
You can read the complete domain dispute policy of ICANN here.MyWindowsClub.com domain dispute case study
In March 2012, Microsoft filed a domain dispute against my domain name MyWindowsClub.com and many other domain names I owned which contained the trademark "Windows" in it. MyWindowsClub.com was a very popular website but the rest of the domains were just reserved for future use. During the domain dispute and resolution process, I agreed to give away all domains except MyWindowsClub.com. I hired a cyber lawyer in India and claimed I own all rights to keep my domain MyWindowsClub.com. At the end of several week long exchange of legal notices and responses, Microsoft gave up on that domain. We came to an agreement that Microsoft will withdraw the UDRP complaint against my company, if I voluntarily transfer the rest of the Windows related domains to them, which I was willing to do from the beginning. Based on a join request from me and Microsoft, National Arbitration Forum dismissed the UDRP complaint. I believe Microsoft gave up because they thought they will not win the domain dispute since I was able to come up with convincing arguments that Microsoft does not meet all the criteria to claim that domain name. What I learnt from the domain dispute with Microsoft is, it is not easy for a trademark owner to claim a domain name from the owner.
Even though Microsoft had to withdraw the complaint, we voluntarily rebranded MyWindowsClub.com to Techulator.com for better branding and also to target various other technologies instead of limiting ourselves to Microsoft Windows platform, which was already losing its glory as the most preferred personal operating system.How to protect your rights if your domain name includes other popular trademarks
There are couple of things you can do to protect your rights on your domain, if it include some popular trademarks:
If you are planning to use AdSense on your website, you may want to read the AdSense application checklist.
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This is really a good information on the basis of technology, cyber law and disclaimer. The case study you have brought with your own experience in the fighting of MyWindowsClub.com and also how you have changed Techulator.com is not based on the dispute but on the lose of glory of the operating system is really worth noting for any one who is interested in bridging the case studies with their education especially to law and management students.