Domain Name Law


Firstly, domain names themselves have no legal entitlement other than as a "ticket" to be part of the internet (like going to a concert/football game). In many countries a domain name itself cannot be trademarked as the root word itself is classified as the substance. E.g. Britain.

However in other regions such as the US and the EU a trademark can be achieved directly on a domain name.

Is it a good idea to buy a domain similar to a trademark holder?:

Definitely an absolute NO. The financial consequences arising out of any legal action are a liability to you the owner. There is no useful secondary market of trademark infringing domains so they cannot be recommended.

If I have some else's trademark that is the same as my domain, or part of my domain contains their trademark, do I have to hand it over?

As you might guess the legal system is never clear cut. You should use common sense. Did you buy the domain in good faith? Do you have some legal interest or connection with the name? And interestingly did you own the name before the trademark was filed?

Remember also that effectively only a trademark holder in the country in which you are located has recourse to your domain (unless of course it is the domain relevant to the trademark holder's country). Interestingly for the internet, the residency of a website is where the servers are located; this is important for tax purposes but also has legal applications. The residency of a domain is another issue, it can only be assumed to be in the country from where the domain registrar operates.

It should be noted also that there are 45 different classes for a trademark. These cover a multitude of different applications from say a class 3 which is cosmetics etc to say class 36 being professional services. A trademark holder can have between 1 and 45 of these classes covered. Any class not covered potential offers an avenue for use of your domain and thus a defense. (Although use common sense, and look at the good faith of what you are doing, because that's what a legal contest will eventually revolve around).

Another defense is that if there are numerous trademark holders with the same mark (trademark) as your domain name, then the question has to be asked, who out of all those trademark holders actually has priority? The answer is well, none of them really. If it is a problem for one of the mark holders then why is it not a problem for the others?

Another defense although yet to be employed (from my observation) is the notion that a trademark holder should be pursuing any country level domain where its trademark exists before pursuing the .com domain. To seek the .com before recourse on these domains gives a sense of bad faith on their part - also why are they not pursuing the .info the .net the .org?
Please refer to your legal advisor where necessary - This does not constitute professional advice Copyright UFO.ORG^TM (c) 2005