It takes a considerable effort, time, and money to establish a new business and promote its brand name for entrepreneurs. However, many company owners neglect to do an exhaustive search for already registered trademarks. Frequently, they end up registering identical trademarks to those already in use in the market. There is a possibility that they may get cease and desist letters or even a legal notice to discontinue using the Trademark in connection with their domain name or website.
In the worst-case situation, businesses may lose their website or domain name due to failure to comply with such legal warnings. To assure that your selected name does not infringe on someone else’s existing Trademark, you must continue reading this article. It helps to understand that no one has already claimed your brand name or a similar mark to create confusion among the public in the market.
What amount to Domain name Infringement?
The Domain Name or URL of a website is the internet address that uniquely identifies the website. It is permissible to incorporate trademarked terms or phrases in the domain name of a website. However, this also creates the possibility for a website’s domain name to infringe on the subject matter.
For instance, if a website’s domain name contains the term “GOCCI,” it may be charged for trademark infringement against the famous Fashion brand “GUCCI”.
Additionally, domain names that create confusion with comparable branded content may be used to establish trademark infringement. Thus, a Fashion brand website that contains the term “GUCCI” may also be subject to copyright regulations since a customer may mistake “GOCCI” for “GUCCI.” Even if the two words are spelt differently, the primary consideration is whether the domain name will create customer confusion.
How to select a Non-Infringing Domain Name
Following are some basic points which need to be considered before selecting a domain name:
- Must have basic knowledge about Trademark Law
To comprehend how to select a domain name that does not violate another’s Trademark, it’s essential to know the fundamentals 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 products from those of other parties. A service mark is similar to a trademark, except it identifies and distinguishes the service provider, not a product.
- Trademarks are not legally protected if their usage creates uncertainty or confusion in the minds of consumers about the product or service or the source of the goods or services being supplied.
- Whoever uses any trademark that is deceptively similar to an already existing brand intends to create confusion about the goods or their source will be required to stop using the mark and may be required to pay the trademark owner compensation.
Thus, while selecting a domain name that does not infringe on the Trademark of another party, you must choose a word, phrase, symbol, or design (or a mix of these) that accurately describes your goods and does not confuse prospective consumers.
- Trademark Search
A business should conduct a thorough trademark search to strike a balance between the requirement to find a distinctive domain name and the need to respect the rights of trademark owners. By doing a trademark search, the business has access to all registered and pending trademarks. Businesses should search not just for the proposed mark but also for similar marks, such as synonyms and alternative spellings. If a business’s search finds any names that are the same or almost identical to its proposed domain name, the entrepreneur should consider the following:
Several factors to examine to prevent domain name infringement include the following:
- Whether your website provides comparable goods or services to those offered by the trademark holder?
- Whether a buyer would use your domain name while doing an online search for the other business?
- Regardless of whether your company distributes or sells a product through similar distribution channels?
- Whether the name of the rival business is very well-known?
If the answer to any of these questions is “yes,” a Trademark infringement may be possible.
To ensure that your company’s chosen or desired domain name does not infringe on an existing trademark, your attorney should conduct a thorough trademark search. The trademark search includes identifying similar domain names to ensure that no one has trademarked the name or a similar name that could confuse current and prospective customers. Additionally, many terms and phrases may be trademarked without being officially registered. By and large, trademark protection is acquired via use, regardless of whether the product is registered or not. Before attempting to acquire a domain name that may create confusion, it may be essential to search before using the mark as a domain name.
What options are available in the case of Domain Name Infringement?
If the other party’s domain name creates confusion with your brand, it may be trademark infringement. If you find a possibly infringing domain name, you may be able to seek legal redress in one of the following ways:
- Seek the advice of a Trademark Expert:
It is always prudent to seek expert advice if you believe that your Trademark has been infringed. An IP lawyer will inform you of your options for initiating action against the Infringement of your domain name and will advise you on how to enforce your rights.
- Sending Cease and Desist Letter:
With the help of an IP expert, you may send a cease and desist letter to the infringer to end the trademark infringement on your website. It is recommended that you seek the assistance of a trademark attorney when writing such a letter.
- Filing Lawsuit in Civil Suit:
A civil lawsuit can be filed in Court against the holder of the domain name, requesting the Court to pass an order for the removal of the domain name or to transfer such domain name to the trademark owner.
- Settlement outside of Court – Arbitration and Mediation
Arbitration or mediation is frequently effective in resolving Infringement in some instances.
Arbitration, in general, is a less formal, quicker, and less expensive procedure than court proceedings, and an arbitral award is more easily enforced internationally.
A benefit of mediation is that the parties retain control over the process of dispute resolution. As such, it can aid in the maintenance of positive business relations with another enterprise with whom your business may collaborate in the future.
Do I Require Legal Counsel to Resolve Domain Name Infringement?
Choosing the appropriate domain name is crucial to the growth of any online commercial company. You may contact an expert IP professional lawyer like HHS Lawyers and Legal Consultants if you need legal help or advice about domain name infringement. While domain name infringement is a severe offence, many safeguards are available to owners of branded content. Alternatively, you may contact experts if you need assistance 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 construe any legal advice. For your specific situation, don’t hesitate to contact us today.