In today's interconnected and online world, a company's website is often worth as much as its physical storefront. Indeed, many companies have foregone physical locations altogether. For this reason, businesses must be attentive to their URL the website address that users will type to find their online presence.
You already know the importance of your company's name and logo for trademark purposes. This raises a natural question: Do you, or should you, have a trademark over your business name as a URL? What if you use a different URL than your formal business name? In the Internet age, these questions are critical for businesses to explore, particularly if they hope to do business nationally or internationally.
Before delving into the application of trademarks to URLs, we must first understand some basics of trademark law. Broadly speaking, a trademark is any word, symbol, or design that identifies a good or service with its source. Common examples include the word "GAP" for the clothing store, or the four-colored flag for Microsoft. These devices immediately signal to consumers the manufacturer of the goods that bear the mark.
If another business comes along and uses "your" mark, there are two potential harms.
First, consumers may be confused and buy a competitor's product, believing that it is "your" product when in fact it was manufactured by a third party.
Second, your business is essentially losing its goodwill, since the investments you have made into your product and your advertising are being coopted by an infringer.
Trademark law seeks to prevent both of these harms, by giving trademark owners the power to sue infringers for money damages as well as for court orders requiring that they cease their infringing activities.
Many businesses will register their trademarks with the U.S. Patent and Trademark Office (USPTO), the federal agency that administers national trademarks. Registration confers many important protections, including the ability to protect your mark nationwide, rather than merely within your community.
The USPTO registers trademarks within certain "classes," each of which corresponds to a different type of goods or service. If the same name is registered in different trademark classes, but the goods corresponding to those names do not compete with one another (such as clothing and medical supplies), this does not give rise to an infringement claim.
With these basics in mind, we can consider the application of trademark law to names in cyberspace.
Imagine that you own a restaurant called "Betty's Kitchen" and you have a federally registered trademark on that name. Your restaurant has table service, and also sells various pastries online to consumers around the country.
One day, you realize that some other entity has registered www.bettyskitchen.com and is selling food products through that site. Does that violate your mark? What about an entity that uses www.kitchen.com/bettys, or some similar variation?
The same legal analysis applies to potentially infringing URL names as to potentially infringing marks in physical space, with the central question being: Would a reasonable consumer be confused as to the origin of the goods or services in question?
Trademark law does not protect words and phrases that are generic. For example, if you own a store called "Computers" that sells computers and has an URL titled www.computers.com, you are unlikely to receive any trademark protection over that name or address.
However, if your trademark is distinctive, such as www.computers4sale4cheap.com, you are far more likely to be able to argue that consumers associate the URL with your business.
What can you do if you believe someone is infringing on your trademark with their URL? Speak with an intellectual property attorney, specifically one focused on trademark infringement.
In many situations, the first step the attorney will recommend is writing a cease and desist letter to the infringing website owner. Such a letter, typically written on attorney stationery, will usually tell the person to stop their infringement of your trademark within a certain number of days, or else face a lawsuit. More often than not, this sort of communication will get the infringer's attention, and they will remove the site or change the address to avoid litigation. Even if it does not change the behavior, the letter will be useful for showing that you attempted to resolve the dispute in good faith, giving the infringer proper notice of the situation.
When trademark owners disagree, some specialized organizations provide arbitration of domain name disputes. One particularly prominent organization known as the Internet Corporation for Assigned Names and Numbers (ICANN) promulgates rules called the Uniform Domain Name Dispute Resolution Policy (UDRP).
Under the UDRP rules, ICANN approves certain organizations to provide dispute resolution over domain name disputes and conduct the administrative proceedings. These organizations conduct the administrative proceedings under the UDRP rules. For example, the World Intellectual Property Organization (WIPO) runs an Arbitration and Mediation Center, which helps to resolve cross-border domain name disputes.
Beyond "standard" infringement, in which a company seeks to divert customers from your business using a similar or identical URL, the law also protects against the phenomenon of cybersquatting. Cybersquatting occurs when a person buys a domain name that reflects the name of a business or famous person with the intent of selling the name back to the business or celebrity for a profit.
The Anticybersquatting Consumer Protection Act of 1999 authorizes a cybersquatting victim to file a federal lawsuit to regain a domain name or sue for financial compensation. Under the act, registering, selling or using a domain name with the intent to profit from someone else's good name is considered cybersquatting.
Speak to your trademark attorney to see whether these sorts of organizations could be useful in providing dispute resolution services to resolve your specific domain name conflict.
