Relationships of Trademarks on Domain Names


  • Many companies try to use their business name or trademark as their domain name
  • domain name includes:
    • top-level domain
      • E.g., .com, .net, or .gov
    • domain
      • E.g., left of the TLD
  • entity must register its domain name
    • want their domain name to be recognizable to their customer
    • first company to register a domain name has the right to use that name
  • Domain name registrars do not review a domain name to make sure that it does not infringe on a trademark
    • if it is available for use, then they will accept registration
  • Cybersquatting is the bad-faith registration of a domain name that is a registered trademark or trade name of another entity
    • registers trademarks or trade names to profit off others
    • register them in the hopes of selling the domain name to the trademark owner for large amounts of money
    • Trademark owners have the right to protect their trademarks from cybersquatters
  • Anti-Cybersquatting Consumer Protection Act (ACPA)
    • passed in 1999
    • designed to
      • stop people from registering domain names that were the trademarks of other entities
      • allows entities to sue others for cybersquatting
    • To prove their case, the plaintiff must show:
      • cybersquatter registered the trademark in bad faith with the intent to profit from the registration
    • under the law, plaintiff can
      • recover damages
      • ask the court to issue an injunction
    • Courts also can award the contested domain name to the winning party
  • trademark owners can pursue a domain name dispute under the ICANN UDRP
    • may be faster than pursuing an action under the ACPA
    • a contested domain name may be disconnected or transferred to a winning plaintiff