Choosing the right domain name for your business or website can be a challenging process. With so many options to choose from, it can be tempting to select a domain name that leverages the brand recognition of an existing trademark. However, doing so without permission can land you in legal trouble. In this 10000 word article, we will explore best practices for navigating trademark law when selecting a domain name, strategies for avoiding infringement, and steps to take if you receive a cease and desist letter.
Understanding Trademark Law
A trademark refers to any word, phrase, symbol or design that identifies the source of a particular product or service. Trademark holders have the exclusive right to use their mark in commerce in connection with the goods or services for which it is registered. This helps prevent consumer confusion about the origin of a product and protects the investment made in promoting a brand.
For a domain name, this means you generally cannot use an identical or confusingly similar trademark as your domain without permission, even if you add other terms to it. For example, if you do not have permission from Coca-Cola, you should not register cocacola.com, mycocacola.com, cocacolafanclub.com or any other variation that incorporates the Coca-Cola name. Doing so constitutes trademark infringement.
The standard used by courts is whether the domain name creates a likelihood of confusion with the trademark. Factors considered include:
- The similarity of the mark and domain. The more closely a domain replicates or incorporates a trademark, the more likely confusion is found. Even adding minor terms like “my” or “fan club” may not be enough to avoid infringement if the primary focus is still the trademarked name.
- Whether the domain targets the same customers or offerings as the trademark owner. Courts will look at whether the domain name targets the same kind of consumers looking for the types of goods or services sold under the trademark. The more overlap, the more confusion likely exists.
- The fame of the trademark. If a mark is well-known or famous, more leeway is given and more likelihood of confusion found. This is because consumers readily associate the famous mark with the trademark owner.
- Whether the domain name implies sponsorship or endorsement. Domains like “officialcocacola.com” suggest the trademark holder has approved the site when that may not be the case.
- The intent behind registering the domain. Bad faith intent to profit from the trademark’s reputation weighs towards finding infringement.
Given the complex analysis involved, most domain registrars have dispute resolution policies that prohibit registering domains that infringe trademarks or otherwise act in bad faith. So trademark law impacts which domains you can register, even if you have not yet received a complaint from the trademark owner. It is wise to do a trademark search and analysis before moving forward with a domain name.
Conducting Trademark Searches
Before settling on a domain name, it is critical you do your homework and investigate whether the name infringes any existing trademarks. Failing to do a proper trademark search increases the likelihood you could face legal action down the road forcing you to give up the domain name. Here are some tips for conducting trademark searches:
- Search USPTO database – The US Patent and Trademark Office (USPTO) maintains a Trademark Electronic Search System (TESS) where you can input potential names and search for similar registered trademarks. Focus your search on marks registered for relevant goods and services that your domain name targets.
- Search state registries – In addition to federal registration, trademarks can be registered at the state level. Check state registries to see if a name is protected on a state level.
- Google it – Conduct Google searches using “trademark” + potential domain name terms and review results. News articles and legal cases referencing trademarks will appear and help flag names to avoid.
- Amazon – Search Amazon listings to see if a name is used for branded products that could hold trademark rights.
- Domain registrations – Use WHOIS lookup tools to see if domains incorporating the name you want are registered, indicating possible trademark rights.
- Consult an attorney – For extra assurance, have an intellectual property attorney conduct searches in comprehensive trademark databases only lawyers have access to. They can provide a legal opinion on infringement risk.
Thoroughly searching these sources gives you the best chance of identifying potential conflicts early so you can modify domain name choices accordingly. Document your search process in case you ever need evidence you made a good faith effort to avoid infringement.
Strategies to Avoid Trademark Conflicts
If your research shows a desired domain name is likely trademarked, all hope is not lost. You have several options to reduce infringement risk:
- Add distinguishing terms – Adding extra words like your company name, “official”, “fan site”, “tribute”, etc. makes it clear you are not claiming to be the trademark holder and reduces confusion. So instead of nike.com you could do theofficialniketributestore.com.
- Use a different TLD – Try registering under a different top-level domain like .net, .org or .info instead of .com. Courts view .com as indicating source/origin more strongly.
- Misspell the name – Intentionally misspelling a trademarked name like micheals.com instead of michaels.com reduces the likelihood consumers think it is sponsored by the trademark owner.
- Use a synonym – Using a synonym of the trademarked word can differentiate you enough to avoid infringement in many cases.
- Get permission – If the trademarked name is important to your project, seek permission from the trademark holder to use the domain. You can license trademarks for authorized uses.
- Change the name – If you want to eliminate risk entirely, simply change the domain name to something completely unique and not trademarked. There are endless possibilities for catchy, creative names to use instead.
By taking one of these approaches and thoroughly documenting your efforts to pick an alternative, non-infringing domain name, you position yourself well in case a trademark owner ever raises an issue in the future.
Fair Use Defense
One defense available if you are accused of trademark infringement is claiming fair use. Fair use allows you to reference a trademarked term without permission in certain contexts, such as:
- News reporting and commentary about the trademark owner
- Comparative product reviews evaluating goods/services offered under the mark
- Parody, satire or criticism incorporating the trademark
- Advertising where the mark is used to compare your offering to the trademark owner’s product
To have a viable fair use defense, you must:
- Only use as much of the mark as needed for the context
- Not do anything that suggests sponsorship or endorsement by the trademark holder
- Make sure your use does not cause confusion with the trademark owner’s offerings
- Use the mark in a descriptive, not trademark sense (i.e. generally lowercase without TM or ® symbols)
- Add prominence to your own brand/name and not just the third-party trademark
- Not use the third-party mark in your domain name
If you can meet these requirements in your specific situation, fair use may protect your right to incorporate a trademark. However, fair use is subjective and nuanced, so legal guidance is advisable before moving forward.
Responding to a Trademark Cease and Desist Letter
If you receive a cease and desist letter accusing you of trademark infringement for your domain name, do not ignore it. Trademark owners must actively police their rights or risk weakening their ability to enforce their marks. Take the letter seriously.
Carefully review the contents of the letter. Confirm the sender represents the trademark holder and has standing to assert rights over the domain. Research the trademark registration basis for their complaint. Evaluate whether you have any fair use or other defenses.
In your response, be professional and conciliatory, but firmly defend your position if you believe you acted properly. Provide evidence of your due diligence in researching the name and selecting your domain. Highlight any weaknesses in their claim or explain why your use qualifies as fair use.
Offer alternatives like adding disclaimers to your site to reduce confusion. Suggest you both mediate in good faith to reach an amicable compromise before resorting to legal action. Remain open to negotiating acquisition of the domain at a fair price if you cannot reach agreement otherwise.
If discussions reach an impasse, consult an attorney about your options. You may be able to file a declaratory judgment action seeking a court ruling you did not infringe. Or if you feel their case is weak, you could force them to sue and bear the expense of litigation. Consult counsel before proceeding given the nuances with trademark law.
With a measured approach and willingness to negotiate, many trademark disputes can be resolved short of litigation. But you have to engage thoughtfully and stand your ground when your rights are involved.
Proactive Steps to Avoid Trademark Issues
Your best course of action is taking steps to avoid trademark conflict proactively before selecting and registering a domain name:
- Brainstorm alternatives – Develop a list of multiple possible domain names that get across your brand identity and steer clear of trademarks.
- Vet names thoroughly – Conduct comprehensive trademark searches and consult experts to identify infringement risks upfront.
- Prioritize uniqueness – Emphasize choosing an entirely unique, invented word to maximize differentiation from existing trademarks.
- Document due diligence – Keep detailed records of your brainstorming, vetting, and decision process to evidence a good faith effort to avoid infringement.
- See an attorney – Have an intellectual property lawyer review your shortlist of domains and provide a legal opinion on risks.
- Register multiple domains – Buy any highly-desired domains you identify in case your first choice becomes unavailable later.
- Monitor usage – Periodically run searches to see if any domains you considered but rejected are now active sites you could monitor or take action against.
- Renew promptly – Never let your domains lapse into expiration where they could end up in someone else’s hands. Set calendar reminders and auto-renew if available.
- Buy trademark insurance – Special insurance policies can cover costs if you end up in a trademark dispute, providing extra peace of mind.
With the right prevention strategies, you can greatly reduce chances of investing time and money into a domain name you could ultimately lose or be forced to change. An ounce of prevention is worth a pound of cure when trademark issues are involved.
Selecting a domain name involves balancing many factors – memorability, branding, availability and more. But one of the most critical considerations is avoiding trademark infringement. With so many trademark holders actively enforcing their rights online, you expose yourself to cease and desist demands, litigation costs and forfeiture of domains if you do not research and weigh potential conflicts. Fortunately, following best practices like conducting thorough searches, considering alternative names, securing expert counsel, and documenting due diligence can help you safely navigate trademark law when choosing your domain. While it adds effort upfront, the peace of mind realizing you have minimized legal risk is well worth the extra steps.