It takes considerable effort, time and money to start a new business and promote its brand to entrepreneurs. However, many business owners neglect to do an exhaustive search for already registered trademarks. Often, they end up registering identical marks to those already used in the market. They may receive cease and desist letters or even a legal notice to cease using the mark in connection with their domain name or website.
In the worst case, businesses can lose their website or domain name due to failure to follow these legal warnings. To make sure the name you selected does not infringe on someone else’s existing trademark, you should continue reading this article. It helps to understand that no one has ever claimed your brand name or a similar mark to confuse the public in the market.
What is the amount of domain name infringement?
A website’s domain name or URL is the Internet address that uniquely identifies the website. It is permitted to incorporate branded terms or phrases into the domain name of a website. However, it also creates the possibility for a website’s domain name to violate the subject.
For example, if a website’s domain name contains the term “GOCCI”, it can be accused of trademark infringement against the famous fashion brand “GUCCI”.
Additionally, domain names that are confusing with comparable branded content can be used to establish trademark infringement. Thus, a fashion brand website that contains the term ‘GUCCI’ may also be subject to copyright regulations, as a customer may confuse ‘GOCCI’ with ‘GUCCI’. Even though the two words are spelled differently, the main consideration is whether the domain name will confuse the customer.
How to select a non-infringing domain name
Here are some basic points that should be considered before selecting a domain name:
- Must have basic knowledge of trademark law
To understand how to select a domain name that does not infringe another’s trademark, it is essential to know the basic principles of trademark law.
- A trademark is a term, phrase, symbol or design, or a combination of words, phrases, logos or designs, that identifies and differentiates the source of one party’s goods from those of other parties. A service mark is similar to a trademark, except that it identifies and distinguishes the service provider, not a product.
- Trademarks are not legally protected if their use creates uncertainty or confusion in the minds of consumers about the product or service or the source of the goods or services provided.
- Anyone who uses a mark that deceptively resembles an already existing mark with the intention of creating confusion about the goods or their source will be required to cease using the mark and may be required to pay compensation to the owner of the mark. .
So when selecting a domain name that does not infringe on another party’s trademark, you should choose a word, phrase, symbol, or design (or a mixture of these) that accurately describes your products and does not confuse potential consumers.
- Trademark search
A business must conduct thorough trademark research to balance the requirement to find a distinctive domain name with the need to respect the rights of trademark owners. By performing a trademark search, the business has access to all registered and pending trademarks. Businesses should research not only the proposed trademark, but also similar trademarks, such as synonyms and alternate spellings. If a business search finds names that are identical or nearly identical to the proposed domain name, the entrepreneur should consider the following:
Several factors to consider to prevent domain name counterfeiting include:
- Does your website offer goods or services comparable to those offered by the trademark holder?
- Would a buyer use your domain name when searching online for the other company?
- Whether your company distributes or sells a product through similar distribution channels?
- If the name of the rival company is very well known?
If the answer to any of these questions is “yes”, trademark infringement may be possible.
To ensure that the domain name chosen or desired by your business does not infringe on an existing trademark, your attorney should conduct a thorough trademark search. Trademark research includes identifying similar domain names to ensure that no one has registered the name or a similar name that could confuse current and potential customers. In addition, many terms and expressions can be deposited without being officially registered. On the whole, trademark protection is acquired through use, whether the product is registered or not. Before attempting to acquire a potentially confusing domain name, it may be essential to do some research before using the trademark as a domain name.
What options are available in the event of a domain name violation?
If the other party’s domain name is confusing with your trademark, it may be a trademark infringement. If you find a potentially infringing domain name, you may be able to seek legal redress in one of the following ways:
- Seek advice from a trademark expert:
It is always prudent to seek expert advice if you believe your trademark has been infringed. An intellectual property lawyer will tell you about your options for taking action against your domain name infringement and advise you on how to enforce your rights.
- Sending the Cease and Desist Letter:
With the help of an intellectual property expert, you can send a cease and desist letter to the infringer to stop the trademark infringement on your website. It is recommended to seek the assistance of a trademark attorney when drafting such a letter.
- Filing a Civil Complaint:
A civil suit can be brought in court against the domain name holder, asking the court to make an order to remove the domain name or to transfer that domain name to the trademark owner.
- Out of Court Settlement – Arbitration and Mediation
Arbitration or mediation is often effective in resolving the breach in some cases.
Arbitration, in general, is a less formal, faster and less costly procedure than court proceedings, and an arbitral award is more easily enforced internationally.
One of the benefits of mediation is that the parties retain control of the dispute resolution process. As such, it can help maintain a positive business relationship with another business that your business may collaborate with in the future.
Do I need legal counsel to resolve domain name infringement?
Choosing the right domain name is crucial for the growth of any online business venture. You can contact a professional intellectual property attorney like HHS Lawyers and Legal Consultants if you need legal help or advice about domain name infringement. Although domain name infringement is a serious offense, there are plenty of safeguards available to branded content owners. Alternatively, you can contact experts if you need help filing an infringement lawsuit to defend your website.
The purpose of this article is to provide an overview of the subject. The content mentioned in the article is not intended to interpret legal advice. For your specific situation, do not hesitate to contact us today.