Can I make someone turn over a domain name for trademark infringement?

The question of if use of a trademark in a domain name is trademark infringement is complicated. Typically domain ownership by itself is not a trademark infringement. Trademark infringement requires use in commerce that is likely to cause a likelihood of confusion. Thus ownership alone is not enough. Our trademark attorneys have handled multiple disputes over domain names.

In the late 1990’s and early 2000’s cybersquatting became a major issue in the U.S. and in the world. In response, the World Intellectual Property Organization (WIPO) instituted the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP allows for domain name transfer when the complained of domain is not being used in a trademark manner. The UDRP provides for transfer of a domain if the party claiming a transfer being made shows the following:

(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and

(iii) the domain name has been registered and is being used in bad faith

Typically the first prong is fairly easy to prove for the trademark owner. However, the second two prongs of the test are more difficult. Typically if the domain owner is using the domain at all for a business that is not related to the trademark, the trademark owner will have a difficult time proving a lack of rights or legitimate interest. A further issue in rulings under the UDRP is the requirement of bad faith. The UDRP Policy provides the following nonexclusive reasons for showing bad faith:

(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or

(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or

(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

Thus if the domain owner has not done something to harm the trademark owner or to profit from the trademark owner (such as by selling the trademark owner the domain at an exorbitant price), it can be difficult to overcome a showing of bad faith.

If you are having issues as a trademark owner with a domain name infringing your trademark, or alternatively if you are a domain owner receiving allegations from a trademark owner that the trademark owner has rights, please contact one of our attorneys to discuss your options.