Admittedly, one of the things that bugs me is when people post online certain things about potential legal issues that just aren’t true. And those involving domain-trademark disputes are no exception.
I’ve been meaning to post this article for a long time. But with the seeming number of people who post in forums, for instance, things involving domain disputes they think ought to work and really don’t, I decided it’s time I release this for anyone to read and try to understand.
Before I go on, though, the usual disclaimer that I’m not a lawyer still applies. I’ve checked this with a couple of lawyers I know, but please feel free to verify what I’ve written here independently.
I’ve written before that one of the inherent risks involved in domain registrations is the possibility your domain name might be infringing someone’s intellectual property rights, specifically trademark. If it’s found to infringe their mark, chances are you’ll lose it.
Let’s face it: the Internet is now one giant online network of information being exchanged by 2 or more parties. Unfortunately with information practically comes its opposite: misinformation.
This is made worse even more when people post their responses to questions involving potential domain-trademark disputes and especially telling them to fight the complaining party. I honestly get a wee-bit worked up over things like that, considering it’s so conveniently easy to tell others what to do and not suffer the consequences for it.
I decided it’s time I at least share what I’ve learned, especially from lawyers who handle these things for a living. I am extremely fortunate to have met them online and learned from them, and they have my deepest thanks for that.
Without further delay, I’m listing below 4 common myths involving domain name-trademark disputes. First in line:
1. Common words can’t be trademarks.
I’ve seen some people think common words like apple and tide can’t be trademarks because they’re “too common†in every day life. While we know an apple is a fruit and tide as the waves, we also see people buying Apple Computers and wash their clothes with Tide detergent.
In one of my previous posts, I wrote that a trademark is a word, phrase, symbol, or a combination of any of them used to distinctively identify the source of its goods in commerce. The makers of Apple Computers and Tide detergent consistently market their products using their respective words for their respective businesses, and people have learned to tell who solely produces them.
A word cannot become a trademark if it’s used commercially in its generic or descriptive sense. Using one of the examples above, you can’t use the word apple as a trademark to maybe sell a basket of fruits.
On the other hand, you can still use the word Apple as a trademark to sell perhaps fire extinguishers (but not computers, of course). Apple isn’t descriptively known as a fire extinguisher, so one can actively do that and, hopefully, become commercially successful with it.
Essentially, various parties can use the same common word as a trademark for their respective products, as long as they aren’t associated with one another somehow. The word Delta is used by an airlines, a faucets manufacturer, and a bicycle distributor, yet none are associated or infringing one another’s respective use.
With that in mind, let’s tackle the next common myth:
2. Trademarks exist because they’re registered.
This is another myth that many people continue to believe despite the contrary. It’s probably because of the connotation that trademarks have something “formal†about them.
The truth is, registration isn’t required for a trademark to exist. You might be shocked to know (and assuming I understood this right from them attorneys) that you actually have a trademark the moment you use that word or so distinctively in commerce.
Thus, if you named your fire extinguisher products Apple and successfully sell them using that word, then you already have a trademark. Such is called a “common law trademark†because it’s essentially recognized by common law in that specific area to function as such.
This poses a potential problem, though: if one can actually have a common law trademark without it being registered, how exactly does one show when they started using it for that business? That’s actually where registration comes in, depending on your relevant jurisdiction.
Many developed countries have devised their respective systems for granting broader rights in having a trademark registration. You can file an application that (hopefully) will be granted Federal trademark status at the United States Patents and Trademarks Office (USPTO) if you’re U.S.-based, so check with your country or state’s office for such.
Given the existence of trademarks and the challenges domain names pose towards them leads to yet another myth:
3. Cease and Desist (C&D) letters via email are fake and only sent via postal mail.
I’ve seen many people post samples of C&D letters sent via email, and others claiming they can’t be real because they’re only sent on the mail. Well, there is no law requiring C&D letters to be delivered only that way.
I guess it’s because, again, many people post samples of such received in their mailboxes with some kind of formal letterhead. With the emergence of the Internet and email, many lawyers (and non-lawyers) nowadays practically and routinely send C&Ds electronically.
One domain dispute lawyer I know even said he sends his clients’ C&D letters via email with a PDF file. Not sure of the rationale behind this, but I guess that works for him.
The point is that there’s nothing saying C&D letters are valid only via email, via snail mail, or even a Private Message (PM) on an online forum. C&D letters are basically attempts to try to resolve a potential dispute without having to sue in court.
Then again, it may shock you again to know that C&D letters are not even required to be sent in the first place. Parties like Microsoft have already filed suits without even sending C&D letters, but I guess it’s because they can afford it.
One other myth I want to try to bust would be:
4. Transferring your domain name to an offshore registrar will keep it safe.
Lately I’ve been reading of various reports and topics on the subject of transferring your “stuff†in offshore locations beyond your jurisdiction. This is because doing so makes it possibly more costly to file a suit versus someone beyond your reach.
For the same reason, some believe transferring their .com domain name to a non-U.S.-based registrar will protect it from trademark infringement claims. But as various disputes show, that’s not always the case.
First, many registrars allowing end users like you and me to register .com domain names with them have a clause in the registration contract dealing with domain-trademark disputes or other legal issues arising from it. Many are required to transfer your domain name to a complaining party upon receipt of an order from a court of competent jurisdiction, or from any of the accredited domain dispute resolution providers like the World Intellectual Property Organization (WIPO).
Speaking of WIPO, they’re one of 2 that administer a domain-trademark dispute process called the Uniform Dispute Resolution Policy (UDRP). You can read more about it here.
Going back, let’s say you transfer your Apple-infringing .com domain name with domain registrar Joker based in Europe. You do this thinking it can’t be taken without a court order or so.
Guess what? There have been a couple of UDRP decisions involving 2 parties from 2 different parts of the globe, many of which resulted in transferring the domain name anyway.
Additionally, the on-going Dell v BelgiumDomains et al dispute showed how far a trademark holder can go to protect their interests. One decision locked out BelgiumDomains et al from the .com Registry from doing anything to domain names they manage as part of their trademark infringement lawsuit.
The point here is that transferring your .com domain name to a non-U.S.-based registrar does not guarantee your domain name is safe from domain trademark disputes. The .com Registry is in Virginia, which is subject to any applicable U.S. law (including the Anticybersquatting Consumer Protection Act or ACPA for short) towards the domain name or so in commerce.
Thus, if I transferred my domain name like AppleCompSysdotcom from Moniker to, say, Joker, Apple Computers can still file a dispute and, if won, transfer the domain to them without my say so. It may cost money, but for some it’s the principle.
So this is all for now. While there’s actually a couple more I’d like to write about, I hope these 4 will give you a potentially bigger picture how and why domain-trademark disputes are generally handled in the real-world.
[...] will take action if no reply is secured within that period. I once blogged something about this: Four Common Domain-Trademark Myths | Dave Zan’s Domain Name Blog (Hmm, I guess I should include myth number 5: that others doing it means it’s okay or legal.) As [...]