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FAQs | Legal

Domain Name Laws

Q: What laws are there for similar sounding/meaning domain names?
[Ken Showalter, Onthenet@advocacy-net.com]

  • You need to carefully consider a few things. First, how close are the marks? This is figured out by comparing how the marks look and sound, and considering the meaning, if any, they convey. Second, how strong is the other person's mark? Does it describe his or her products in some way (weak) or is it completely made up (strong)?; is it the only mark like it out there (strong) or are there a bunch like it (weak)?. How close are the services you offer or the products you sell through your Web site to those the other person sells under his or her mark? The closer they are the more risk to you. Do you target the same customers? If so, you could be in trouble, if not this could be a good argument a lawyer could make on your behalf. So the bottom line answer is it depends on the facts.

    Of course, if you're not selling anything (in the broad sense of the word) through your Web site your risk decreases dramatically, and could be eliminated.
    [Michael Adlin, madlin@manatt.com]

  • The legal standard for trademark infringement is whether your trademark (e.g. domain name) is so close to another trademark that it creates a "likelihood of confusion" about the source of your goods or services, in the relevant market. The application of this standard is highly fact-specific. Michael Adlin's comment points out some of the many factual elements that courts have considered in applying the standard.

    If you operated a search engine at www.yohoo.com, you'd run the risk of a lawsuit. However, if you were a chair manufacturer showing your wares at the same address, there might be no problem.

    Netpreneurs can do a lot of useful legwork themselves, but there are at least two points in selecting and registering trademarks where consulting an attorney is especially desirable:

    1. Determining whether your proposed use is too close to existing trademarks for comfort. A good trademark attorney will have a gut reaction based on both court precedent and years of empirical experience, and can advise you about what will fly and what won't. Doing the search is only half the job--accurately interpreting the results and assessing the risk of adopting a new trademark often requires extensive experience.
    2. Applying for registration seems easy on its face (just fill out the form) but writing a description of goods or services that will avoid pitfalls is an art. Consulting a trademark specialist at this stage can save you money and trouble in the end.

    I'd recommend consulting a trademark specialist about the specific domain name you want to use.
    [Evan Smith, Sixbey, Friedman, Leedom & Ferguson, P.C., www.sixbey.com]

  • I used to work for Thomson & Thomson, who performed about 70% of the world's trademark and copyright searches. We often performed domain name searches in addition. While the domain name might remain available, it behooves you to follow up with the trademark to prevent someone else with trademark rights kicking you out of the domain name.

    Unfortunately, if your classification of goods for that trademark remains close to the same type of goods of the sound alike company, they might contest your PTO application on grounds of confusion and similarity. If your name, however, remains in a different classification of goods (e.g. Cadillac for dog food versus Cadillac for Cars) you stand a much better chance of scrutiny, provided the mark passes the PTO classifications for a successful mark (i.e. not descriptive...)
    [John Mackinnon, jmackinnon@teligentcorp.com]

    Resources:
    Domain Name Rights Coalition
    TechWeb article on PETA/Ringling dispute

 

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