Can I Use A Similar Domain Name To A Trademark?

What happens when the domain name you’re trying to register is similar to an established trademark? Domain names can be subject to trademark infringement if their use is confusingly similar or identical to another company’s registered mark.

Have you ever gone to a website only to find that it’s not what you expected? Perhaps the website is filled with ads, or maybe the content is completely unrelated to what you were looking for. 

Cybersquatting is a form of online abuse that has been growing in recent years - and it’s becoming increasingly difficult for genuine website owners to protect themselves from it. If you’re not careful, you could either be an abuser or a victim. I will explain how it works, how you can protect yourself from it, and what legal recourse you have should the worst happen.

What Is Cybersquatting?

Cybersquatting, also known as domain squatting, is an illegal practice of registering, selling or using a domain name with the intention of profiting from someone else's trademark or brand. Cybersquatters typically register domain names that are similar to well-known brands or trademarks in the hopes of attracting internet users to their websites for commercial gain. This can be done by creating a website that looks like the brand's official website or by using the brand's name in the domain name itself.

Cybersquatting is not only unethical, but it can also be confusing and frustrating for internet users who are trying to find a genuine website. It can also damage the reputation of the brand being cyber-squatted. In some cases, it may even be considered trademark infringement.

What Is Typosquatting?

Typosquatting is the most common type of cybersquatting. This is where someone registers a misspelled version of an existing domain name. For example, amozon.com instead of Amazon, and googlr.com instead of Google. They do this in the hope that people will mistype the name of the site they’re trying to visit and end up on the squatter’s site instead.

Large companies utilize resources to prevent typosquatters, for example, Amazon also owns those possible misspelled versions of the domain such as “amozon.com”, “amazonn.com”, etc. So if users mistype the domain, they’ll be redirected to amazon.com. 

The Consequences Of Cybersquatting

Cybersquatting is illegal under both state and federal law and can result in civil penalties including damages, attorney's fees, and transfer of the domain name to the trademark owner.

What is Trademark Law?

Trademark law is the area of law that deals with protecting trademarks. A trademark is a sign, design, or expression that identifies a particular company's products or services. Trademark law protects a company's investment in its trademark by preventing others from using a similar mark for their own products or services.

If someone uses a similar domain name to a trademarked term, they may be infringing on the trademark owner's rights. 

However, there are some circumstances in which such use may be considered fair use and not infringement. For example, if the domain name is used to criticize the trademark owner or to provide comparative advertising, it is unlikely to be considered an infringement.

If you are unsure whether your use of a similar domain name to a trademark is likely to infringe on the trademark owner's rights, you should consult with an experienced trademark attorney.

Can a Domain Name Be a Trademark?

Yes. A domain name is, as you may already know, a website address. Whereas a trademark is something that identifies a brand and can be registered with a patent and trademark offices. A trademark can be broad - it can be a word or phrase, or a design such as a logo.

For example, “Just Do It.” is a catchphrase by Nike, and trademarked by Nike. The domain name “justdoit.com” is also owned by Nike, so if you type in that domain name, you’ll be redirected to nike.com.

Can I Use A Similar Domain Name To A Trademark?

While you may be able to get away with using a similar domain name to a trademark in some cases, it's generally not a good idea. Because;

1. Trademarks are protected by law and can be enforced by the trademark owner. This means that if you use a domain name that is similar to an existing trademark, it’ll be considered cybersquatting and the trademark owner may be able to take legal action against you. 
2. Cybersquatting also means that even if you're not using the exact same domain name as the trademark owner, you may still be infringing on their rights if your domain name is confusingly similar. This means that people might mistakenly believe that your website is affiliated with or endorsed by the trademark owner. 
3. People might avoid doing business with you because they think you're trying to trade off of the goodwill associated with the existing trademark. 

The Domain May Already Be Blacklisted

If the domain name you’ve chosen turns out to be cybersquatting, there’s also a possibility that the domain may already be blacklisted. In this case, someone else registered the same domain in the past, and at the time, the name was flagged as spam by search engines. So that person decided to let go.

If the domain name is blacklisted, your website is unable to rank in search results, which means you’ll never be able to drive organic traffic. This will be a huge waste of time and money in the long run. That’s why it’s important to be careful your new domain is not similar to a famous brand, but it’s also important to check the domain history to make sure it’s clean before you purchase it.

How To Protect Yourself From Cybersquatting

On the other hand, f you're concerned about someone cybersquatting on your name or brand, there are a few things you can do to protect yourself:

1. Register your name or brand as a trademark. This will give you legal recourse if someone tries to register a domain that is confusingly similar to your trademark.
2. Monitor the registration of new domains that contain your name or brand. You can use a service like Domain Tools to do this.
3. If you find someone has registered a domain that infringes on your rights, send them a cease and desist letter demanding that they transfer the domain to you.
4. If the infringing domain is being used for commercial purposes, you can file a cybersquatting claim with ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP).

If You Are a Victim of Cybersquatting

If you find a very similar domain name to yours elsewhere and you think it damages your business, you may want to consider Uniform Domain-Name Dispute-Resolution Policy (UDRP) to resolve disputes concerning the registration of internet domain names. UDRP is not a court or legal system and instead aims to provide an alternative dispute resolution process.

What is UDRP?

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a set of rules that govern disputes between domain name registrants and trademark holders. The policy is designed to give trademark holders a faster and cheaper way to resolve disputes over domain names that are identical or confusingly similar to their trademarks.

Under the UDRP, a complainant must prove three elements to win a domain name dispute:

1. The domain name is either identical or confusingly similar to their trademark.
2. The domain owner in question has no rights or legitimate interests in the domain name.
3. The domain name has been registered and is being used in bad faith.

If the complainant is successful, the panel may order that the domain name be transferred to the complainant, canceled, or suspended until certain conditions are met.

The Cost of Filing a UDRP Complaint

The average cost of filing a UDRP complaint is between $1,500 and $3,000. This includes the filing fee, which is typically around $1,200, and the costs associated with hiring an attorney to draft and file the complaint. These costs can vary depending on the complexity of the case and the experience of the attorney.

How to File a UDRP Complaint

The first step is to select a provider. WIPO, the Internet Corporation for Assigned Names and Numbers (ICANN), and the National Arbitration Forum (NAF) are all accepted providers.

Next, you will file a complaint with the provider. The complaint must include the domain name that is in dispute, as well as your contact information and a list of the trademarked terms that have been infringed upon.

Once the complaint has been filed, the provider will then notify the registrar of the domain name in question. The registrar will then contact the domain owner and inform them of the dispute.

At this point, the domain owner has two options: they can either comply with your request to transfer the domain names, or they can file a counter-notice with the provider.

If they choose to file a counter-notice, then the matter will be put to arbitration. An arbitrator will hear both sides of the argument and make a decision on who should win the case.

Alternatives to UDRP

1. WIPO Arbitration and Mediation Center

The WIPO Arbitration and Mediation Center is an international organization that provides arbitration and mediation services for disputes concerning intellectual property, including domain names. The center is located in Geneva, Switzerland, and is a specialized agency of the United Nations.

2. Court Actions

A court action may be necessary if the dispute cannot be resolved through negotiation or mediation. Court actions can be either domestic or international in nature, depending on the jurisdiction in which the disputed domain name is registered.

3. Domain Name Server (DNS) Filtering

DNS filtering is a technical solution that can be used to block access to websites that are infringing on trademarks or copyrights. DNS filters can be implemented by Internet service providers (ISPs), corporations, or individuals.

4. Trademark Clearinghouse (TMCH)

The Trademark Clearinghouse is a database of verified trademarks that participating registrars consult in order to help resolve disputes over domain names that are identical to registered trademarks. The TMCH is administered by IBM and Deloitte Touche Tohmatsu Limited.

Can I Use A Similar Domain Name To A Trademark? Conclusion

Cybersquatting is an increasingly common and unfortunate practice that can have a devastating effect on businesses and individuals alike. Fortunately, there are steps you can take to protect yourself and your business from cybersquatters. Be sure to register the domain names of all products or services you offer before someone else does, as well as any common misspellings. You should also be aware of trademark infringement laws in your jurisdiction so that if someone attempts to capitalize on your brand name, you can act quickly with assistance from an experienced attorney.